Abstract:
Sound View Innovations, LLC, recently learned how much damage a single word can do to a patent infringement lawsuit. Sound View Innovations sued Hulu, LLC, for infringement of a method claim with steps Sound View Innovations argued could be performed in any order. But the District Court determined that two steps—“receiving a request for an SM object from one of said plurality of clients at one of said plurality of helper servers” and “allocating a buffer at one of said plurality of HSs to cache at least a portion of said requested SM object”—had to be performed in the order listed. Hulu, however, pre-allocated its buffers, meaning the buffers were allocated before a request for an SM object was received. Thus, Hulu failed to infringe Sound View Innovations’ asserted patent. The Court of Appeals for the Federal Circuit affirmed the District Court’s dismissal of the patent lawsuit because the word “received” indicated, by both grammar and logic, that the two steps were ordered. Patent practitioners must be vigilant in looking for terms that may inadvertently limit claimed steps to a particular ordering.

Case Summary:
Decision: Sound View Innovations, LLC v. Hulu, LLC, Case No. 2024-1092, available at https://www.cafc.uscourts.gov/opinions-orders/24-1092.OPINION.1-29-2026_2640097.pdf (Federal Circuit Jan. 29, 2026)
Oral Arguments: https://www.cafc.uscourts.gov/oral-arguments/24-1092_08082025.mp3 (held Aug. 8, 2025)
Patent: US 6,708,213 B1, available at https://patents.google.com/patent/US6708213B1/
Judges: Sharon Prost; Evan Wallach; Raymond Chen (authoring)
Lower Tribunal Opinion: Sound View Innovations, LLC v. Hulu, LLC, Case No. 2:17-cv-04146, Paper Nos. 1091 (Order on Motion to Exclude; Sept. 8, 2023) and 1094 (Judgment; Sept. 25, 2023) (C.D. Cal)
Topics: Patent Infringement; Claim Interpretation (Grammar and Logic); Ordered Limitations

Sound View Innovations sued Hulu for infringement of claim 16 of US 6,708,213 B1 (the ’213 patent).

Claim 16 of the ’213 patent (emphasis added):

16. A method of reducing latency in a network having a content server which hosts streaming media (SM) objects which comprise a plurality of time-ordered segments for distribution over said network through a plurality of helpers (HSs) to a plurality 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 requested SM object;

downloading said portion of said requested SM object to said requesting client, while concurrently retrieving a remaining portion 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 clients.

The District Court dismissed the patent suit because Hulu’s process relied on a pre-allocated buffer—a buffer allocated before receiving a request for a streaming media object. Specifically, the District Court determined that claim 16 required “first ‘receiving a request for an SM object from one of said plurality of clients at one of said plurality of helper servers,’ then ‘allocating a buffer at one of said plurality of’” (emphasis added). Based on this ordering, the District Court concluded that Hulu’s process, which performed the two steps in the opposite order, did not infringe claim 16 of the ’213 patent.

The Court of Appeals for the Federal Circuit accepted the interpretation of the two steps as being ordered because “both the grammar and logic of” claim 16 required performing the receiving step before the allocating step. Specifically, the receiving step recited “receiving a request for an SM object” while the allocating step recited “allocating a buffer . . . to cache . . . said requested SM object.” “Grammatically, ‘a request for an SM object’ in the first limitation provides an antecedent basis for ‘said requested SM object’ in the second.” And logically, for the use of the past tense description (i.e., “received”) in the receiving step “to make sense, a request must have occurred before the object can be described as ‘requested.’ Indeed, only after a request is received does the SM object acquire the status of being ‘requested.’”

During oral arguments, Sound View Innovations tried comparing “receiving a request for an SM object” to a customer ordering a product, and “allocating a buffer . . . to cache . . . at least a portion of said requested SM object” to a company “allocating a warehouse to store goods ordered by customers.” Sound View Innovations argued a seller wouldn’t wait until customers ordered goods before building or selecting the warehouse for storing those goods. But this analogy was quickly shot down from the bench. Arguments quickly shifted to comparing “receiving a request for an SM object” to a radio station caller requesting that the radio station play a particular song (i.e., a “requested song”) and to comparing “allocating a buffer . . . to cache . . . at least a portion of said requested SM object” to the radio station allocating a time period for playing the song. The radio station analogy did not help Sound View Innovations’ case.

Sound View Innovations argued that other claims either used markers or conditional steps (e.g., “allocating a first ring buffer” occurring “upon receiving said first request”) to show the ordering of steps, and thus claim 16’s lack of such markers or conditional steps demonstrated that claim 16 did not have such an ordering. The Court of Appeals for the Federal Circuit found this argument unpersuasive because the grammar and logic of claim 16 already imposed an ordering, and thus alternative indications of the ordering of the steps (e.g., markers or conditional steps) were simply unnecessary.

Sound View Innovations also argued that figure 7B of the ’213 patent showed allocation of a buffer before an SM object was received, and thus depicted an embodiment that would be excluded by the interpretation of the claim language as requiring a particular order. Figure 7B of the ’213 patent is reproduced below.

Figure 7B of the ’213 patent illustrates content server S 71 sending streaming data to client C 73 via intermediary helper server HS 75 (depicted as H in the figure). This figure depicts buffer B1 of intermediary HS 75 having K1 seconds of data from another source such as a local disk of intermediary HS 75 or another helping server.

The Court of Appeals for the Federal Circuit determined that figure 7B did not depict the allocation of buffer B1. Similarly, the supporting description in the specification of the ’213 patent did not describe the allocation of buffer B1. Therefore, the Court of Appeals for the Federal Circuit found that Figure 7B was irrelevant to understanding the scope of claim 16.

Because Hulu’s process used a pre-allocated buffer to store a received SM object (i.e., it performed an allocating step before a receiving step instead of vice-versa), the Court of Appeals for the Federal Circuit sustained the District Court’s non-infringement holding.

Practice Tip:
In interpreting a patent claim, every word is presumed to matter. In Sound View Innovations, the word “received” established an order for steps of a method claim that excluded Hulu’s use of a pre-allocated buffer. Patent practitioners must be careful during claim drafting to ask if every word is needed. This is especially true with steps of a method that could be performed in any order; method steps may become ordered based on one word.

For better or for worse, the U.S. Patent and Trademark Office (USPTO) has been in the midst of a significant overhaul for most of 2025. The Office has experienced a series of major changes, both personnel- and policy-wise, including the swearing-in of a new director, changes in the application of discretionary denials of IPRs, the appointment of new PTAB leadership, the disbandment of the Denver office, and shifting examiner protocols and expectations, to name a few.

Notably, on October 2, 2025, the USPTO internally announced a new interview policy in which examiner “other time” credit for conducting attorney interviews is capped at one hour per prosecution cycle (i.e., from first Office action through request for continued examination (RCE)). By all accounts, additional “other time” credit would require supervisor approval, and any request for a second or subsequent interview during a prosecution cycle may require a showing that granting the interview request would advance prosecution.

Examiner productivity quotas are tied to the number of “examination” hours worked. For each applicant-initiated interview, an Examiner is generally permitted to claim up to one hour of non-examining time (i.e., “other time”). This hour of non-examining credit would proportionally reduce an Examiner’s productivity expectation for the biweek in which the credit is claimed. Previously, there was no practical limit on the amount of “other time” credit examiners could be granted (within reason) based on conducting multiple applicant-initiated interviews during a prosecution cycle of a patent application.

The practical effect of disallowing non-examining credit for interview time is to treat the duration of an interview as “examination” time for which an examiner is expected to produce work product (i.e., Office actions and the like). It is anticipated this new internal policy will result in a higher frequency of denied interview requests for second and subsequent interviews. However, it remains to be seen what practical effects on interview practice this new policy will have and whether the Office will promulgate official guidance to stakeholders in relation to the policy.

To manage potential pitfalls associated with the new interview policy, practitioners should be prepared to rethink and adjust their interview strategies, such as by reducing the frequency of interview requests, by forgoing interviews until after final Office actions, by conducting shorter interviews, and/or by including, with each subsequent interview request, an explanation as to how granting the interview would advance prosecution.

Since the Supreme Court’s 2014 Alice decision, U.S. patent law has included a two-step test for subject matter eligibility (SME): first, determine if a claim is directed to an abstract idea, and if so, then ask if it contains an “inventive concept” that makes it patent-eligible. For software and AI-based inventions, this framework has been notoriously difficult to navigate because it is often unclear what counts as an “abstract idea” versus a “technological improvement.” As a result, SME remains one of the most challenging and unpredictable issues in patent law, with inventors and practitioners struggling to craft claims that satisfy shifting case law and USPTO guidance.

Two recent USPTO developments relating to SME for AI/software inventions are of particular interest to patent practitioners.

In August of 2025, Deputy Commissioner Charles Kim issued a memo to examiners in Technology Centers 2100, 2600, and 3600, in which the agency’s official guidance regarding software and AI-related inventions was restated. Notably, the memo included several “reminders” to examiners about how to properly evaluate subject matter eligibility and cautioned them not to issue § 101 rejections simply because they are “uncertain as to the claim’s eligibility.”

The following month, in one of his first official acts as the 60^th director of the USPTO, John Squires issued a decision on request for rehearing in Ex parte Desjardins (Appeal No. 2024-000567; application 16/319,040). In the decision, Director Squires vacated a § 101 rejection for claims directed to a computer-implemented method of training a machine learning model that had been issued sua sponte by the PTAB. He cautioned that “[c]ategorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology,” while emphasizing that “§§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope … [and] should be the focus of examination.”

If the Kim memo could be viewed as a gentle reminder that examiners should be more judicious in their issuance of § 101 rejections for AI and software claims, then the Desjardins rehearing decision marks a clear signal that the new leadership at the Office intends to take a pro-patent stance on the controversial SME issue. While the Desjardins decision is not officially designated as “precedential,” practitioners can view Squires’ action as an aggressive push to curtail the volume of § 101/SME rejections tendered by examiners and largely permit the patenting of AI-related inventions.

G&G was pleased to sponsor a table at the recent IPLAC Judges Dinner at the Union League Club of Chicago. 

We thank IPLAC for organizing and hosting this 130^th Annual Dinner to Honor the Federal Judiciary.  Congratulations to Judge John F. Kness, U.S. District Court for the Northern District of Illinois, who received this year’s IPLAC Distinguished Judicial Service Award.

Special thanks to clients and colleagues who joined us for the event.  It was great to see you all there.  

Pictured from left to right:
Jim Stephenson, Senior Legal Counsel, Aeris (now Arity)
Atanu Das, Partner, G&G
Zain Sadiq, Senior Associate, IP Strategy, JP Morgan Chase
Lawrence Cosby, Assistant General Counsel, Intellectual Property,  JP Morgan Chase
Elizabeth Spahn, Guest of the Honorable Judge Gerald Cohn
Honorable Gerald Cohn, Most Recently Federal Judge at U.S. District Court for the Middle District of Pennsylvania
Dan Bestor, Senior Director – Patent Operations, Motorola Solutions
Christine Cochran, Associate General Counsel, Intellectual Property, Northwestern University
Ed Guntin, Managing Partner, G&G
Brad Bidwell, Assistant General Counsel, Knowles Corporation

IPLAC – Intellectual Property Law Association of Chicago, is the first association of its kind in the US. The organization is committed to protecting innovation both in Chicago and nationally, “by advancing the tenets of IP law in order to serve our members and greater community.” IPLAC accomplishes their mission by offering members opportunities for professional growth and development, networking opportunities and events that serve to create a diverse and inclusive environment while promoting the advancement of IP law.

We are so proud of our talented team of Paralegals:

                          Jill Holman
                    Stacey Hill
                    Devon Weide
                    Wyatt Hill
                    Kalie Schnabel
                    Barbara Salchow
                    Levi Lapham

Today we celebrate you – your dedication and the professionalism that you bring to your work. Your tireless efforts are the backbone of our success.

Your organization, support and attention to detail ensure that our client’s cases are handled with the utmost care and integrity.

Thank you for being the skilled hands and sharp minds that keep the firm running smoothly. We value your contributions and the vital role you play at Guntin & Gust.

Happy National Paralegal Day!