Standing to Defend your (Expired) Patent

Sony Corp. v. Iancu (Fed. Cir. 2019)

Sony’s patent no. 6,097,676 is directed toward multiplex audio recordings with each channel having a different language translation.  Back in 2015, SONY sued ARRIS for infringing the ‘676 patent. (One of several infringement lawsuits between the companies).  In 2016, ARRIS turned-around and filed for inter-partes-review (IPR). The PTAB instituted as to two claims (5 and 8) and found them unpatentable (obvious).  That final written decision was issued in September 2017. ARRIS and SONY subsequently settled their ongoing litigation and in November 2017.  At that point SONY appealed and the USPTO intervened to defend the PTAB decision.  The patent had also already expired (August 2017).

On appeal, the majority and dissent argued over standing — whether there was any ongoing case-or-controversy since the patent expired in 2017 and the parties settled. Judge Newman – The Great Dissenter – argued that the court lacked jurisdiction:

There is no interest, neither private interest nor public interest, in the fate of this patent. There appears to be no consequence of either our appellate decision today or the potential PTAB decision on the remand now ordered by the court.

The majority opinion authored by Judge Dyk and joined by Chief Judge Prost held otherwise:

It is well-established that our decision (and the Board’s decision on remand) would have a consequence on any infringement that occurred during the life of the ’676 patent.

I agree with the majority here. The patentee has a right to defend its patent against cancellation by the USPTO even after expiration — and up to the six-year timeline for back-damages.

Setting procedure aside. On the merits, the majority agreed with the patentee Sony – that the PTAB had erred in claim construction.  Here, this is a case where means-plus-function language helped the patentee with a narrow claim construction.

The patent here appears to be fairly broadly drafted — claiming an “information reproducing device” that is able to play “a plurality of voice data, each voice
data having similar contents translated into different languages are multiplexedly recorded as audio data of plural channels.”  The device has a “default code” for which language to play.

The argument on appeal involved the term “reproducing means for reproducing the audio data of the channel designated by the default value stored in the storing means.”  As a means-plus-function term, the element was interpreted on appeal under 112(f):

(f) Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Here, although you might imagine that the “reproduction means” is some piece of hardware, the patent only describes it in software form.  The result is that the best interpretation of the claim term also limits it to software form — since means plus function limitations are construed only “to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  The prior art described the claimed means in hardware form rather than software. On remand, the PTAB will need to determine whether the claims remain obvious in light of that narrowed claim construction.

= = = = =

Important quote from the case:

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) (“[T]he [court] has an independent obligation to determine the meaning of the claims, notwithstanding the views asserted by the adversary parties.”).

21 thoughts on “Standing to Defend your (Expired) Patent

  1. 9

    I whole hearty agree with the majority here. In Chafin v. Chafin, 133 S. Ct. 1017 (2013), the Court discussed mootness at length in a complex child abduction case and held that the dispute between the parents was not moot because issues regarding the custody of the child remained unresolved. The Chafin Court noted that the prospects of success of the suit were irrelevant to the mootness question, and uncertainty about the effectiveness and enforceability of any future order did not moot the case. Chafin, 133 S. Ct. at 1024-26. According to the Roberts Court, a case is only moot when the court cannot give any “effectual” relief to the party seeking it. See Knox v. Service Employees International Union, Local 1000, 132 S. Ct. 2277, 2287 (2012). In the past and historically, the case-or-controversy limitation on the judicial power also generally prevents a federal court from deciding a question that once affected the rights of litigants, but no longer does. Moot, and therefore non-justiciable under Art. III, cases include challenges to convictions after the convicted defendant has died, challenges to the legality of a war that has ended, and challenges to restrictions placed on a business that has since closed. The famous case of Roe v Wade, however, illustrates one exception to the mootness rule. In that case, the Court considered Jane Roe’s challenge to a Texas abortion law long AFTER her pregnancy had ended. The Court said that if an important right is denied, and the application of the mootness rule would mean that the denial of that right–though likely to continue–would escape judicial review, the Court has Art. III jurisdiction to consider the case and, if appropriate, vindicate the right in question. The mootness doctrine requires that a party to a dispute maintains a personal stake throughout the litigation, in addition to having such a stake at the outset as required by standing doctrine. Kingdomware Technologies v. United States, U.S. (Jun. 16, 2016) (holding that a case involving short term contracts was NOT moot, because of “a reasonable expectation that the same complaining party [will] be subject to the same action again” in the future). Unless something truly extraordinary happens, claims will not become moot. “A case becomes moot … only when it is impossible for a court to grant any effectual relief whatever to the prevailing party.” Campbell-Ewald Co. v. Gomez, 136 S. Ct. 663, 669 (2016). Considering there is a remaining liability the court made the correct decision. Although, the court should have framed the issue as a question of mootness and not as a question of whether there is an existing or ongoing case-or-controversy.

  2. 8

    It seems incorrect to say that a hardware implementation does not contain an “algorithm” per se.

  3. 7

    Not standing per se, but from the Dissent, page 2 (emphasis added):

    Federal courts are limited to their constitutional
    authority, and “[i]f a dispute is not a proper case or
    controversy, the courts have no business deciding it, or expounding
    the law in the course of doing so.
    ” DaimlerChrysler
    Corp. v. Cuno, 547 U.S. 332, 341 (2006).

    Someone should remind the Supreme Court as they anchor their 101 muckery in the subjective, projective, merely possible, “May” of what may unfold if a particular patent is allowed to remain valid (noting, as one must, that the word “May” necessarily implicates the inclusion of “may not).

    The (rather large) elephant in the room is that the highest court hand waives this restrain on their authority in order to scriven their own version of 35 USC 101, for which — per the “shear” of the holding of Schein, the Court is not permitted to even add their own “exceptions.”

    The Court, having disregarded this limitation, has unleashed a Gordian Knot of ensuing Common Law evolution of law. This has been noted by all three branches of the government, including the judicial branch itself.

    The other “shear” that then applies (as per the holding*** in the now released California Franchise Tax Board v. Hyatt), are the conditions for which the Court may sua sponte overturn itself.

    Those conditions most assuredly exist in the aftermath of the Supreme Court’s re-scrivining of the law of eligibility.

    ***Noting that while the holding surely does provide for this view, the decision could have been better written and more forcefully stressing this point.

  4. 6

    “The prior art described the claimed means in hardware form rather than software. On remand, the PTAB will need to determine whether the claims remain obvious”

    Hey maximialists, y’all bleat about how software is the same as hardware…well here you go. This distinction supposed by the appeals court should mean nothing to the obviousness analysis, amirite?

    Also note that the right to sue for past infringement does not pass with a simple conveyance to another party of a patent’s rights, title, and interest; that particular right must be granted explicitly in writing, which is a further argument that the value of a right to sue for past infringement does not hinge on any form of speculation.

    1. 6.1

      Marty,

      Stop misrepresenting the condition.

      It has never been “the same as.”

      Equivalence – in the patent sense – is NOT “the same as.”

      I’ve only pointed this out to you like dozens of times now.

      As to your last paragraph, I am not sure your point makes it through the muddling of “simple” versus simply “all rights” (which is enough to cover your “explicit” remark without a separate explicit repetition of what is covered by the word “all.” You seem to conflate the separate notion of whether or not “speculation” is involved in a general sense of what it means for a patent providing a right to enforce (even in the post-lapse 6 year backwards for damages time domain).

    2. 6.2

      You beat me to it. So software is not equivalent to hardware.

      1. 6.2.1

        My historical acronym friend steps up to the plate, swings, and misses.

        Again.

  5. 5

    Reexaminations [and IPRs?] can also even be INITIATED after the patent has expired, if still during the 6 year 35 U.S.C. 286 statutory period of potential enforceability of the patent for damages for infringements occurring before the patent expired. [But claim amendments may not be possible.]

    1. 5.1

      Once upon a time it made a difference in IPRs because expired patents were not subject to BRI construction. Additionally, if a patent was set to expire before a trial could be concluded, a district court-like construction was used.

      Claim amendments are not possible in expired patents. Any submitted amendments dissolve when the patent expires, even if on appeal at the PTAB or Fed. Cir.

  6. 4

    The patent here appears to be fairly broadly drafted — claiming an “information reproducing device” that is able to play “a plurality of voice data, each voice data having similar contents translated into different languages are multiplexedly recorded as audio data of plural channels.”

    If I can get on my soapbox for a moment, I see this silliness – “the claims are broadly drafted” – all the time in Office Actions, right before the examiner fails to show that certain details of the claim are disclosed or suggested by the prior art.

    Of course the claim is broadly drafted, with respect to everything except the key element or combination of elements that distinguishes it from the prior art. That’s what good claim drafters do.

    This kind of assertion adds nothing of value to an Office Action. With all due respect, I submit that the same is true here.

    1. 4.1

      This more reflects the ongoing mantra against patents (there must be something wrong with every patent…).

      As you note, good claim drafters always push the envelope with a spectrum of claim scope, which necessarily includes pushing the edge on the broad side.

      Often, you will see those with a decidedly anti-patent bent (cough, Malcolm and MaxDrei) push or a position that the only (possible) valid claim is one which is excessively a picture claim (or even, an “objective structural” picture claim).

      Not sure why these types never seem to get that this mechanism is in furtherance of serving the client. No, wait, I definitely get why they do NOT get this…

  7. 3

    Important quote from the case:

    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) (“[T]he [court] has an independent obligation to determine the meaning of the claims, notwithstanding the views asserted by the adversary parties.”).

    I noticed that as well. I am not sure that the court is correct in this assertion. This is more of a civil-law philosophy. Common law courts decide cases as between two parties; our courts do not pretend to be seeking some sort of Platonic view of the one true claim construction. That is why there is a presumption involved in means-plus-function construction (one or the other party actually has to raise the issue before claim with “means” might be construed as not a m+f claim, or before a claim without “means” might be construed as a m+f).

    1. 3.1

      Greg, would you care to enlarge on your civil law/common law point, because it interests me. It’s part of my job to arrive at Freedom to Operate opinions. Part of that is reading claims and reaching a view what they mean. In civil law mainland Europe and common law UK I think I can do that, with some degree of confidence, thereby to deliver something useful to my client, and feel that I’m justified in rendering to my client a substantial invoice for my services.

      But I am scratching my head when I wonder how any US patent attorney can opine (in advance of getting the answer from the Federal Circuit) with any degree of confidence whatsoever, what a claim of a US patent means. Maybe you can reassure me, that it’s not as hopeless a task as it seems to me?

      Or perhaps the fog of uncertainty as to the meaning of the claim is seen as a positive advantage that should be nurtured and developed, as a spur to early settlement of patent disputes, and a disincentive to go to litigation?

      1. 3.1.1

        If you are looking for clarity, I would imagine that you would be more upset about what the courts have been doing with their ping-pong games on 101 than any issues on claim construction.

        Elsewise, it appears that you just more ability to “clear” your client’s desires regardless of any actual patents out there.

        I think though that Greg’s larger point here is interesting. While he supplements his lead-in statement with an example tagged to whether or not 112(f) is in play, the identified issue is much larger than that and goes to the court deciding not between two contesting views (the views of the plaintiff and defendant), but takes a more nanny-state “Platonic ideal” in deciding what is being claimed.

        This seems to be an untowards power grab, ignoring the plain words of Congress as to exactly who has the authority (and responsibility) of setting forth just what the invention is (one of the purposes of 35 USC 112).

      2. 3.1.2

        Hi Max (& Paul at 3.2 below). I think that I misunderstood what the court is saying here when I disagreed with the quoted assertion. Now that I have gone back and re-read Exxon and Markman, I think that what the court is saying is that it is free to arrive at a construction that is not quite what either party is offering. In other words, if P offers a reasonable reading of a first contested limitation and an unreasonable reading of a second contested limitation, while D offers an unreasonable construction of the first and a reasonable construction of the second, the court is free to follow P on the first contested limitation and D on the second. The court is not obliged to go all for P or all for D. Surely no one objects to that understanding.

        That is as much as to say, I think that you should just ignore my #3. It was premised on a misreading of what the court intended to say.

    2. 3.2

      Sony Corp. v. Iancu: “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) (“[T]he [court] has an independent obligation to determine the meaning of the claims, notwithstanding the views asserted by the adversary parties.”).”
      Isn’t this consistent with the Sup. Ct. decision in Markman v. Westview Instruments (1996) (9-0) that claim construction is a matter for the court?
      It seems particularly apt for appeals from IPRs, where claim interpretation may have been argued independently of any infringement considerations. And in another recent Dennis blog it was noted that appellate courts are not precluded from raising applicable legal issues not argued below by either party.

      1. 3.2.1

        When does “interpretation” become “re-writing?”

  8. 2

    I agree with the majority here.

    Me too. It is unusual for me to find myself agreeing with Judge Dyk as against Judge Newman, but this is not even a close point.

    The patentee’s right to sue for infringement within the last six years is being extinguished. That is a concrete and tangible stake in the outcome by anyone’s reckoning. I take it that Judge Newman considers this right “speculative” because the patentee does not have any particular infringer in mind right now, but what of that. If this patent were still in force, it would be equally “speculative” whether any such infringer would be identified before the last chance to sue runs out. That is really quite beside the point. The fact that the patentee is losing even the possibility of bringing suit is enough to support Art. III standing for purposes of this appeal.

    1. 2.1

      I agree.

    2. 2.2

      “I take it that Judge Newman considers this right “speculative” because the patentee does not have any particular infringer in mind right now, but what of that. ”

      Or, for another matter, the patentee may well already have another potential infringer in mind, but should not have to make that information public pending the outcome of the new review of the claims.

  9. 1

    The prior art described the claimed means in hardware form rather than software. On remand, the PTAB will need to determine whether the claims remain obvious in light of that narrowed claim construction.

    Just to be clear, is it more accurate to say that the prior art used the word “hardware” (or some equivalent) in the context of identifying the origin of the “functionality” but the art did not, in fact, describe “the form” of the hardware?

    I’m not suggesting it would make a difference in the outcome (these claims are obvious) except to make things even worse for the patentee than suggested by the write up.

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