USPTO decision finding Sony’s CD recording claims obvious reversed by Federal Circuit due to improper means-plus-function determination (“computer-implemented” limitation requires algorithm)

Sony Corporation v. Andrei Iancu (USPTO as intervenor)

Docket No. 2018-1172 (IPR2016-00834)
May 22, 2019

Brief summary: IPR FWD obviousness finding reversed and remanded as disputed means-plus-function limitation is computer-implemented and requires an algorithm and Board did not determine whether prior art disclosed the algorithm.

Summary: Sony appealed USPTO (“Board”) IPR final decision finding claims 5 and 8 of (expired) US 6,097,676 “directed to ‘an information recording medium’ (e.g., a compact disk…)…and ‘a reproducing device’ that can select which channel to play based on a default code or value stored in nonvolatile memory” unpatentable as obvious over US 5,130,816 (“Yoshio”). The FC panel opinion explains that “[t]he primary focus during [IPR] was whether the ‘reproducing means’ limitation”, which the Board construed as a means-plus-function limitation, was whether that limitation “was computer-implemented and required an algorithm”. The Board determined it was not “because ‘synthesizer 11 and controller 13 are both shown and described in the ‘676 patent as discrete hardware elements” and “found that Yoshio taught most of the limitations of claims 5 and 8”. The FC panel reviewed the Board’s legal conclusions de novo and its factual findings for substantial evidence” (Redline, FC 2015; In re Cuozzo, FC 2015; Phillips, FC 2005 (the “claims of an expired patent are construed using the framework set forth in Phillips”)). The FC panel opinion explained that “[t]here is no dispute that the ‘reproducing means’ limitation is a means-plus-functon limitation, invoking 35 U.S.C. § 112, [para.] 6” (pre-AIA). In this appeal, Sony and the USPTO agreed on the function of the reproducing means limitation (step one of means-plus-function claim construction (Golight, FC 2004), but disagreed regarding the “corresponding structure disclosed in the specification” (step two (Golight; Med. Instr., FC 2003 (“corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim”); Techs. Austl., FC 2008 (requires “more than simply a general purpose computer”); WMS Gaming, FC 1999 (where “the disclosed structure is a computer…programmed to carry out an algorithm…the disclosed structure is…the special purpose computer programmed to perform the disclosed algorithm”)). Sony argued that an algorithm is required but the Board “held that the limitation is implemented in hardware and accordingly does not require an algorithm.” The FC panel concluded that the limitation “is computer-implemented” and that “the corresponding structure must include an algorithm” (e.g., “The ‘676 patent specification clearly links the function…to the algorithm flowchart….”) And since “[t]he Board did not reach the question of whether Yoshio, which is computer-implemented, disclosed the algorithm of the ‘676 patent or the equivalent”, the FC panel vacated and remanded the Board decision. Judge Newman’s dissent argues there is no Article III case or controversy because the ‘676 patnet expired in 2017 and the parties have settled the DC infringement suit. FN1 of the panel opinion notes that the USPTO’s and Sony’s opposing arguments “present[] an Article III controversy” (also citing Genetics Inst., FC 2011 (“[A]n expired patent may form the basis of an action for past damages….”) and Mars, FC 2008; Keranos, FC 2015 (“the owner of an expired patent can license the rights”)).

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Means-plus-function. Bookmark the permalink.

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