Sony Corp. v. Iancu
| Decision Date | 22 May 2019 |
| Docket Number | 2018-1172 |
| Parties | SONY CORPORATION, Appellant v. Andrei IANCU, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor |
| Court | U.S. Court of Appeals — Federal Circuit |
Scott Anthony McKeown, Ropes & Gray LLP, Washington, DC, argued for appellant. Also represented by Douglas Hallward-Driemeier ; Henry Huang, East Palo Alto, CA.
Robert McBride, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by Thomas W. Krause.
Before Prost, Chief Judge, Newman and Dyk, Circuit Judges.
Dyk, Circuit JudgeSony Corp. is the owner of U.S. Patent No. 6,097,676 ("the ’676 patent"). It appeals the Patent Trial and Appeal Board’s ("Board’s") final decision in IPR No. 2016-00834. The Board found claims 5 and 8 of the ’676 patent unpatentable as obvious. We vacate and remand.
The ’676 patent is directed to "an information recording medium" (e.g., a compact disk, video disk, or magneto-optical disk) that can store audio data having multiple channels and "a reproducing device" that can select which channel to play based on a default code or value stored in nonvolatile memory. ’676 patent, Abstract; id. col. 1, ll. 11–15. The specification states that the reproducing device is provided with "storing means" for storing the audio information (e.g., audio data recorded in different languages), "reading means" for reading codes associated with the audio information (e.g., 0, 1, 2, and 3 for English, French, German, and Japanese, respectively), and "reproducing means" for reproducing the audio information based on the default code or value. Id. col. 3, ll. 4–11.
The specification gives the example of a device manufactured to record and store audio data (e.g., of a movie) in multiple different languages for various countries. Id. col. 3, ll. 36–42; id. col. 10, l. 60–col. 11, l. 9. A single device can be manufactured for use in any of those countries "provided that the default [value (e.g., 0, 1, 2, or 3) ] is ... changed and set for every destination country." Id. col. 3, ll. 36–42.
Claim 5 of the ’676 patent recites:
Id. col. 12, ll. 28–43. Claim 8 recites the same limitations as claim 5 and additionally recites that "codes representing the kinds of the audio data" are multiplexedly recorded in the information recording medium, that the information reproducing device includes "reading means" for reading the codes, and that the reproducing means is for reproducing the audio data "according to the codes read by the reading means." Id. col. 13, ll. 1–21.
The Board instituted inter partes review as to claims 5 and 8 of the ’676 patent. The primary focus during inter partes review was whether the "reproducing means" limitation was computer-implemented and required an algorithm.
On September 28, 2017, the Board issued a final decision finding the claims unpatentable as obvious over U.S. Patent No. 5,130,816 to Yoshio ("Yoshio"). The Board construed the "reproducing means" limitation as a means-plus-function limitation. The Board explained that the recited function is "reproducing the audio data of the channel designated by the default value stored in the storing means." Arris Int’l PLC v. Sony Corp. , IPR2016-00834, 2017 WL 4349410, at *4 (P.T.A.B. Sept. 28, 2017). The Board determined that the structure that performs these functions is "a controller and a synthesizer, or the equivalent." Id. at *12. The Board further concluded that the limitation is not computer-implemented and does not require an algorithm because "synthesizer 11 and controller 13 both are shown and described in the ’676 patent as discrete hardware elements." Id. at *5, 9.
The Board found that Yoshio taught most of the limitations of claims 5 and 8 and that the claims would have been obvious over Yoshio. Yoshio is directed to "a method and apparatus of recording and reproducing information, in which a plurality of audio signals corresponding to speech in a plurality of languages can be recorded on a recording medium" (e.g., a video disc or a digital audio disc) and in which "an audio signal corresponding to the speech in a desired language can be obtained from among the plurality of audio signals recorded on the recording medium." Yoshio, col. 1, ll. 43–50. Yoshio taught that audio signals of five channels (e.g., CH1, CH2, CH3, CH4, and CH5 for sound effects, Japanese, English, Chinese, and Korean, respectively) can be recorded. Yoshio further disclosed a computer-implemented "system controller" that detects whether a channel has been designated and supplies data indicating the designated channel, or data indicating a pre-determined channel if no channel was designated, to an ADPCM decoder and graphics decoder to select the channel. Based on the channel designated, the audio track in the corresponding language is played.
Sony appeals. Petitioners have elected not to participate in the appeal, and the Director of the U.S. Patent and Trademark Office intervened to defend the Board’s decision. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).1
We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. Redline Detection, LLC v. Star Envirotech, Inc. , 811 F.3d 435, 449 (Fed. Cir. 2015). We review the ultimate question of the proper construction of a patent de novo, with any underlying fact findings reviewed for substantial evidence. In re Cuozzo Speed Techs., LLC , 793 F.3d 1268, 1280 (Fed. Cir. 2015). The ’676 patent expired in August 2017. During inter partes review proceedings, claims of an expired patent are construed using the framework set forth in Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc. , 853 F.3d 1272, 1279 (Fed. Cir. 2017).
Sony’s primary argument on appeal is that the Board erred in construing the "reproducing means" limitation. Claims 5 and 8 both recite, in pertinent part, "reproducing means for reproducing the audio data of the channel designated by the default value stored in the storing means." ’676 patent, col. 12, ll. 28–43 (emphasis added); id. col. 13, ll. 11–21. There is no dispute that the "reproducing means" limitation is a means-plus-function limitation, invoking 35 U.S.C. § 112 ¶ 6.2
The first step in construing a means-plus-function claim limitation is to determine the function of the limitation. Golight, Inc. v. Wal–Mart Stores, Inc. , 355 F.3d 1327, 1333 (Fed. Cir. 2004). Here, Sony and the Director agree that the function performed by the reproducing means is "reproducing the audio data of the channel designated by the default value stored in the storing means."
After identifying the function of the means-plus-function claim limitation, the next step is to determine the corresponding structure disclosed in the specification. Id. at 1334. "Under this second step, structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim." Id. (quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB , 344 F.3d 1205, 1210 (Fed. Cir. 2003) ).
"In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor." Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech. , 521 F.3d 1328, 1333 (Fed. Cir. 2008). For means-plus-function claims "in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm," we have held that "the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm." WMS Gaming, Inc. v. Int’l Game Tech. , 184 F.3d 1339, 1349 (Fed. Cir. 1999).
Before the Board, Sony’s primary argument was that the "reproducing means" limitation is implemented on a computer and thus, under our precedent, requires an algorithm to carry out the claimed function. The Board disagreed and held that the limitation is implemented in hardware and accordingly does not require an algorithm. Specifically, the Board concluded that the corresponding structure of the reproducing means is "a controller and a synthesizer, or the equivalent." Arris , 2017 WL 4349410, at *12. The Board further explained that "[a]lthough the specification of the ’676 patent includes steps that could be termed an algorithm and that could be implemented on a computer, we agree with Petitioner that does not mean that the controller is ‘computer-implemented’ or require that the construction must include the algorithm." Id. at *10.
Although the parties appear to agree on appeal that the specification contemplates a hardware-implementation of the reproducing means, we think Sony’s original position was correct. We are not bound by the parties’ arguments as to claim construction. See Exxon Chem. Patents, Inc. v. Lubrizol Corp. , 64 F.3d 1553, 1555–58 (Fed. Cir. 1995) (...
To continue reading
Request your trial
-
Unified Patents, LLC v. Robocast, Inc.
...these exhibits as "argument, separate from the Petition, and intended to supplement the Petition and Dr. Bederson's declaration." Id. Patent Owner adds that "the Petition does not cite Exhibits 1017 and 1018 with any particularity, but instead merely notes that certain paragraphs of Dr. Bed......
-
Netflix, Inc. v. Robocast, Inc.
...governing inter partes review do not limit them to unexpired patents. See 35 U.S.C. §§ 311(b), 311(c), 315; see also Sony Corp. v. Iancu, 924 F.3d 1235, 1239-41 (Fed. Cir. 2019) (affirming that a case or controversy before the PTAB existed when a patent was expired; articulating the importa......
-
Google LLC v. Robocast, Inc.
... ... See 35 U.S.C. §§ ... 311(b), 311(c), 315; see also Sony Corp. v. Iancu, ... 924 F.3d 1235,1239-41 (Fed. Cir. 2019) (affirming that a case ... ...
-
Google LLC v. Robocast, Inc.
... ... See 35 U.S.C. §§ ... 311(b), 311(c), 315; see also Sony Corp. v. Iancu, ... 924 F.3d 1235,1239-41 (Fed. Cir. 2019) (affirming that a case ... ...
-
A New Frontier in Patent Bar Ethics?
...an IPR that all challenged patent claims, which related to customizing video game characters, were obvious. Sony Corp. v. Iancu , 924 F.3d 1235, 2019 U.S.P.Q.2d 185891 (Fed. Cir. 2019). The Federal Circuit vacated and remanded the PTAB’s decision that two claims were obvious. The Federal Ci......
-
An Interview with Li-Hsien (Lily) Rin-Laures
...an IPR that all challenged patent claims, which related to customizing video game characters, were obvious. Sony Corp. v. Iancu , 924 F.3d 1235, 2019 U.S.P.Q.2d 185891 (Fed. Cir. 2019). The Federal Circuit vacated and remanded the PTAB’s decision that two claims were obvious. The Federal Ci......
-
Patenting Nature
...an IPR that all challenged patent claims, which related to customizing video game characters, were obvious. Sony Corp. v. Iancu , 924 F.3d 1235, 2019 U.S.P.Q.2d 185891 (Fed. Cir. 2019). The Federal Circuit vacated and remanded the PTAB’s decision that two claims were obvious. The Federal Ci......
-
Why Open Source Licenses with a Commons Clause May Become Less Common
...an IPR that all challenged patent claims, which related to customizing video game characters, were obvious. Sony Corp. v. Iancu , 924 F.3d 1235, 2019 U.S.P.Q.2d 185891 (Fed. Cir. 2019). The Federal Circuit vacated and remanded the PTAB’s decision that two claims were obvious. The Federal Ci......