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.
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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.”).