924 F.3d 1235
Fed. Cir.2019Background
- Sony owns U.S. Patent No. 6,097,676, which claims an "information reproducing device" that stores a default value to select one of multiple multiplexed audio channels (e.g., different languages) and reproduces the selected channel.
- Claims 5 and 8 were challenged in IPR2016-00834; the Board found them obvious over Yoshio (U.S. Patent No. 5,130,816) and construed the "reproducing means" as a means-plus-function limitation tied to hardware ("a controller and a synthesizer").
- The Board concluded the reproducing means was not computer-implemented and thus did not require an algorithm in the corresponding-structure disclosure.
- Sony appealed, arguing the reproducing means is computer-implemented and, under Federal Circuit precedent, requires disclosure of an algorithm as the corresponding structure for a means-plus-function limitation.
- The Federal Circuit majority held the specification links the reproducing means to a flowchart (Figure 16) and explicit processing steps, so the limitation is computer-implemented and its corresponding structure must include the disclosed algorithm; vacated and remanded for the Board to determine whether Yoshio discloses that algorithm (or equivalent).
- A dissent argued the appeal is moot and nonjusticiable because the patent expired, the IPR petitioner declined to defend, and the underlying district suit was settled and dismissed.
Issues
| Issue | Plaintiff's Argument (Sony) | Defendant's Argument (Director / Petitioners) | Held |
|---|---|---|---|
| Proper construction of "reproducing means" (means-plus-function) | The reproducing means is computer-implemented and thus its corresponding structure must include the algorithm disclosed in the spec | The Board/Petitioners: the structure is hardware (controller + synthesizer) and need not include the algorithm | The court held the specification ties the reproducing means to a controller and synthesizer that are computer-implemented and to the flowchart algorithm; corresponding structure must include the disclosed algorithm; vacated and remanded |
| Whether the Board erred by not requiring algorithm disclosure | Patent language and Figure 16 show algorithmic processing performed by the controller | The Board: presence of hardware elements in the spec means no computer-implementation requirement | Court disagreed with Board; found specification expressly requires execution of the Figure 16 processing, so algorithm is required as structure |
| Whether Yoshio discloses the required algorithm or its equivalent | Sony argued Board had not evaluated whether Yoshio discloses the algorithm | Director/Petitioners argued Yoshio renders claims obvious (Board found so) | The court did not decide; remanded for Board to assess whether Yoshio discloses the algorithm or equivalent and whether claims are obvious |
| Article III jurisdiction / mootness (raised in dissent) | Sony asserted appellate review is proper and parties remain adverse; consequences exist for past infringement | Dissent argued patent expired, petitioner won't defend, district suit settled—no live controversy | Majority found adverseness and potential consequences (e.g., cancellation of claims, past damages) sufficient; dissent would dismiss for lack of jurisdiction |
Key Cases Cited
- Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir.) (standard of review for Board factual findings)
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir.) (claim construction review in IPRs)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim construction framework)
- WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339 (Fed. Cir.) (means-plus-function for computer-implemented inventions requires disclosed algorithm)
- Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir.) (means-plus-function claim interpretation principles)
- Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir.) (specification descriptions of the "present invention" can limit claim scope)