Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 54
`
`Entered: September 28, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS INTERNATIONAL PLC, ARRIS GLOBAL LTD.,
`PACE AMERICAS, LLC, PACE AMERICAS HOLDINGS, INC.,
`and PACE AMERICAS INVESTMENTS, LLC,
`Petitioner,
`
`
`v.
`
`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00834
`Patent 6,097,676
` ____________
`
`
`
`Before JENNIFER S. BISK, BART A. GERSTENBLITH, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 54
`
`Entered: September 28, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS INTERNATIONAL PLC, ARRIS GLOBAL LTD.,
`PACE AMERICAS, LLC, PACE AMERICAS HOLDINGS, INC.,
`and PACE AMERICAS INVESTMENTS, LLC,
`Petitioner,
`
`
`v.
`
`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00834
`Patent 6,097,676
` ____________
`
`
`
`Before JENNIFER S. BISK, BART A. GERSTENBLITH, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`IPR2016-00834
`Patent 6,097,676
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`
`I. INTRODUCTION
`ARRIS International plc, Pace Ltd.,1 Pace Americas, LLC, Pace
`Americas Holdings, Inc., and Pace Americas Investments, LLC
`(collectively, “Petitioner”) filed a Petition for inter partes review of claims 5
`and 8 of U.S. Patent No. 6,097,676 (Ex. 1001, “the ’676 patent”). Paper 2
`(“Pet.”). Sony Corporation (“Patent Owner”) filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”). On September 30, 2016, we instituted trial on
`one of the grounds presented in the Petition—that Yoshio2 would have
`rendered the subject matter of claims 5 and 8 obvious to one of ordinary skill
`in the art at the time of the invention. Paper 13 (“Institution Decision” or
`“Inst. Dec.”).
`Following institution, Patent Owner filed a Request for Rehearing of
`the Institution Decision (Paper 14, “Reh’g Req.”), and we denied that
`Request (Paper 21, “Rehearing Decision” or “Reh’g Dec.”). Patent Owner
`then filed a Response (Paper 24, “PO Resp.”), and Petitioner filed a Reply
`(Paper 29, “Reply”). Petitioner also filed a Motion to Exclude Evidence
`(Paper 35, “Mot. Excl.), to which Patent Owner filed an Opposition
`(Paper 41, “Opp. Mot. Excl.”), and Petitioner filed a Reply to Patent
`Owner’s Opposition (Paper 44, “Reply Mot. Excl.). Patent Owner also filed
`a Motion for Observation with respect to the cross-examination of
`
`
`1 According to updated mandatory notice information filed under 37 C.F.R.
`§ 42.8, original petitioner “Pace Ltd. . . . changed its name to ARRIS Global
`Ltd. in May of 2016.” Paper 16, 1. We have updated the caption
`accordingly.
`
`2 U.S. Patent No. 5,130,816 to Junichi Yoshio (Ex. 1005)
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`2
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`Petitioner’s Reply Witness, Dr. Samuel H. Russ (Paper 37, “Obs.”), in
`response to which Petitioner filed a Response (Paper 40, “Obs. Resp.”).
`We held an oral hearing on June 29, 2017. A transcript of the hearing
`is included in the record. Paper 52 (“Tr.”). After the hearing, we ordered
`Patent Owner to file complete copies of a claim construction brief and a joint
`claim construction statement filed in related district court litigation, partial
`copies of which brief and statement Patent Owner had filed concurrently
`with its Patent Owner Response (Exs. 2003, 2004) and were the subject of a
`Motion to Exclude filed by Petitioner (Paper 35). Paper 45, 2 (“Order”). In
`the Order, we also authorized Petitioner and Patent Owner to file a Brief
`(Paper 49, “Pet.’s Brief on Claim Constr.”) and Reply Brief (Paper 50 “PO’s
`Reply Brief on Claim Constr.), respectively, to address whether Petitioner
`should be bound by the parties’ agreement in the related litigation as to the
`construction of a claim term disputed in this proceeding. Paper 45, 3–4.
`Lastly, we authorized Patent Owner to file a three-page Notice of
`Supplemental Authority related to the Federal Circuit’s decision in IPCom
`GmbH & Co. v. HTC Corp., 861 F.3d 1362 (Fed. Cir. 2017), which issued
`after the hearing (Paper 47, “Supp. Auth.”), and we authorized Petitioner to
`file a three-page response to Patent Owner’s Notice (Paper 48, “Resp. Supp.
`Auth.”).
`This is a Final Written Decision pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons set forth the below, we conclude that
`Petitioner has shown by a preponderance of evidence that the challenged
`claims are unpatentable.
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`II. BACKGROUND
`A. Related Proceedings
`The parties indicate that the ’676 patent is involved in Sony Corp. v.
`Pace plc, No. 1:15-cv-00288 (D. Del.), filed April 1, 2015. Pet. 1–2;
`Paper 5, 2; Paper 16, 2.
`B. The ’676 Patent
`The ’676 patent, titled “Information Recording Medium and
`Reproducing Device Therefor with Codes Representing the Software
`Category and Channels of Recorded Data,” describes “an information
`recording medium such as a compact disk, video disk and magneto-optical
`disk,” and “a reproducing device for reproducing information recorded in
`such an information recording medium.” Ex. 1001, at [54], 1:11–15.
`In what is termed the “third aspect . . . according to the present
`invention,” the reproducing device is provided with “storing means for
`storing designation information for designating audio information to be
`reproduced,” “reading means for reading codes representing kinds of audio
`information,” and “reproducing means for reproducing the audio information
`designated by the designation information from plural kinds of audio
`information.” Id. at 3:4–11. Audio information designated as a “default” is
`“selected from audio information of plural kinds,” and “the audio
`information thus selected is reproduced.” Id. at 3:31–35, 3:57–61. Thus, for
`example, audio data for a movie may be translated into different languages
`for various countries and multiplexedly recorded in an information recording
`medium, with each language correspondingly identified by identifiers, such
`as 0, 1, 2, and 3 for English, French, German, and Japanese, respectively.
`Id. at 10:61–67. One of the identifier numbers is set as a default value in a
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`nonvolatile memory in the information reproducing device—in products to
`be used in the United States or the United Kingdom, for instance, the
`identifier number 0 for English is set as the default value; in products to be
`used in France, the identifier number 1 for French is set as the default value;
`and so on. Id. at 10:67–11:9, Fig. 15. Accordingly, information reproducing
`devices for use in multiple countries “may be made common provided that
`the default is to be changed and set for every destination country”; “the
`predetermined audio information selected from various audio information
`can be always reproduced”; and “any other audio information can also be
`reproduced as desired by changing the default.” Id. at 3:40–43, 61–64.
`A preferred embodiment is described with reference to Figure 7,
`reproduced below.3
`
`
`3 We note that the ’676 patent states that the preferred embodiment of the
`third aspect is “described with reference to FIG. 1” (Ex. 1001, 3:12–13), but
`that appears to be a typographical error. The description following that
`statement refers to “nonvolatile memory 16” (id. at 3:15), which is depicted
`only in Figure 7, and the Brief Description of the Drawings and Detailed
`Description sections of the ’676 patent identify Figure 7 as a block diagram
`showing a construction of the third preferred embodiment (id. at 4:35–37,
`7:54–56; cf. id. at 4:17–19 (identifying Figure 1 as a block diagram showing
`a construction of “a first preferred embodiment” (emphasis added))).
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`Figure 7 is a block diagram showing the construction of the information
`reproducing device of the third preferred embodiment. Id. at 4:35–37.
`According to the ’676 patent, the “storing means” comprises nonvolatile
`memory 16; the reading means comprises decoders 3–7, audio decoders 8a–
`8c, video decoders 9a–9c, and data decoders 10a–10c; and the reproducing
`means comprises synthesizer 11 and controller 13. Id. at 3:12–19.
`In the operation of the device, disk 1 is loaded into drive 2, and
`information recorded in disk 1 is reproduced by drive 2. Id. at 7:56–58.
`Decoder 3 decodes a reproduced signal output from drive 2 and supplies
`reproduced data from each track to decoder 4. Id. at 7:58–62. Decoder 4
`separates the reproduced data from each track into audio data, video data,
`and superimpose data, and supplies these data to decoders 5, 6, and 7,
`respectively. Id. at 7:64–67.
`Decoder 5 reads data recorded at an audio header portion (multiplex
`header portion) from the audio data received, and supplies the read data to
`controller 13. Id. at 8:1–3. Further, decoder 5 separates packet data
`following the data recorded at the audio header portion into plural channels,
`and supplies the separated data to audio decoders 8a–8c, respectively. Id. at
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`6
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`8:4–7. Each of audio decoders 8a–8c reads data recorded at an audio packet
`header portion from the audio packet data received, and outputs the read data
`to controller 13. Id. at 8:22–24. Further, each of audio decoders 8a–8c
`decodes data recorded at an audio data portion following the audio packet
`header portion, and outputs the decoded data to synthesizer 11. Id. at 8:25–
`28. Synthesizer 11 is controlled by controller 13 to synthesize the outputs
`from audio decoders 8a–8b and output a synthesized signal to a speaker or
`the like (not shown). Id. at 8:43–46. Nonvolatile memory 16 is provided to
`store predetermined default values, such as the language identifiers for
`products to be exported to or used in various countries. Id. at 8:62–64,
`10:61–11:9.
`C. The Challenged Claims
`Challenged claims 5 and 8 are reproduced below.
`5. An information reproducing device for reproducing an
`information recording medium in which audio data of plural
`channels are multiplexedly recorded, the information
`reproducing device comprising:
`storing means for storing a default value for designating one
`of the plural channels to be reproduced; and
`reproducing means for reproducing the audio data of the
`channel designated by the default value stored in the storing
`means; and
`wherein a plurality of voice data, each voice data having
`similar contents translated into different languages are
`multiplexedly recorded as audio data of plural channels; and a
`default value for designating the voice data corresponding to
`one of the different languages is stored in the storing means.
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`8. An information reproducing device for reproducing an
`information recording medium in which audio data of plural
`channels and codes representing kinds of said audio data are
`multiplexedly recorded, the information reproducing device
`comprising:
`storing means for storing a default value for designating one
`of the plural channels to be reproduced;
`reading means for reading the codes representing the kinds
`of the audio data; and
`reproducing means for reproducing the audio data of the
`channel designated by the default value stored in the storing
`means, according to the codes read by the reading means; and
`wherein a plurality of voice data, each voice data having
`similar contents translated into different languages are
`multiplexedly recorded as audio data of plural channels; and a
`default value for designating the voice data corresponding to
`one of the different languages is stored in the storing means.
`Ex. 1001, 12:28–43, 13:1–21.
`D. Evidence Relied Upon
`The instituted ground relies on Yoshio, which issued July 14, 1992,
`from an application filed July 24, 1989, that in turn claimed the benefit of a
`Japanese patent application filed February 9, 1989 (id. at [22], [30], [45],
`[75]). Petitioner also relies upon two declarations of Dr. Russ (Exs. 1003,
`1022), in support of its Petition and Reply, respectively.
`
`III. ANALYSIS
`
`A. Claim Construction
`Patent Owner concedes, and Petitioner does not contest, that the
`’676 patent expired in August 2017. PO Resp. 8 n.1; Reply 10. We review
`the claims of an expired patent using a district court-type claim construction
`standard. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2013). Under
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`that standard, claim terms are given their ordinary and customary meaning,
`as would be understood by a person of ordinary skill in the art at the time of
`the invention in light of the language of the claims, the specification, and the
`prosecution history of record. Phillips v. AWH Corp., 415 F.3d 1303, 1313–
`17 (Fed. Cir. 2005) (en banc).
`1. The Reproducing Means Limitation
`The parties’ dispute in this case focuses on one particular limitation—
`“reproducing means for reproducing the audio data of the channel
`designated by the default value stored in the storing means” (the
`“reproducing means” limitation)—recited by claims 5 and 8. PO Resp. 1, 5–
`17; Reply 2–17.
`A claim limitation using the phrase “means for” creates a rebuttable
`presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.4 See
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015).
`Section 112 ¶ 6 provides that:
`An element in a claim for a combination may be expressed as a
`means . . . 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.
`When construing a means-plus-function limitation under § 112 ¶ 6, it
`is necessary first to identify the claimed function, and then to look to the
`
`
`4 Section 4(c) of the Leahy-Smith America Invents Act (AIA), Pub. L. No.
`112-29, § 4(c), 125 Stat. 284 (2011), re-designated 35 U.S.C. § 112 ¶ 6, as
`35 U.S.C. § 112(f). Because the ’676 patent has a filing date before
`September 16, 2012 (effective date of the statute), we refer to the pre-AIA
`version of 35 U.S.C. § 112.
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`specification to identify the corresponding structure for that function. In re
`Aoyama, 656 F.3d 1293, 1296–97 (Fed. Cir. 2011); Cardiac Pacemakers,
`Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Under that
`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.” Med.
`Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210
`(Fed. Cir. 2003) (quoting B. Braun Med. Inc. v. Abbott Labs., 124 F.3d
`1419, 1424 (Fed. Cir. 1997)). Our Rules specifically require that the petition
`identify the corresponding structure in proposing a construction for a means-
`plus-function claim limitation. 37 C.F.R. § 42.104(b)(3). “This inquiry is
`undertaken from the perspective of a person of ordinary skill in the art.”
`Cardiac Pacemakers, 296 F.3d at 1113 (citing Atmel Corp. v. Info. Storage
`Devices, Inc., 198 F.3d 1374, 1378–79 (Fed. Cir. 1999)).
`As an initial matter, there is no dispute in this case that the
`reproducing means limitation is subject to construction under § 112 ¶ 6 and
`that the claimed function of the reproducing means is “reproducing the audio
`data of the channel designated by the default value stored in the storing
`means,” as explicitly recited in each of claims 5 and 8. Pet. 16; PO Resp. 1.
`There also does not appear to be any dispute that the recited function has
`two portions that can be classified as “selecting” a designated audio channel
`and “reproducing” the audio data of the designated audio channel. Pet. 16;
`PO Resp. 7. Finally, there does not appear to be any dispute that the
`structures corresponding to those two functions in the specification of the
`’676 patent are, respectively, a “controller” and a “synthesizer.” Pet. 17; PO
`Resp. 5, 7. Rather, the dispute between the parties centers on whether the
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`construction of the reproducing means limitation additionally requires that
`the controller be linked to an algorithm. PO Resp. 5–17; Reply 5–17.
`In the Institution Decision, we agreed with Petitioner that the
`’676 patent discloses a controller and a synthesizer as structure
`corresponding to the reproducing means. Inst. Dec. 14–15. These
`identifications are supported explicitly by the specification, which provides
`that “the reproducing means comprises a synthesizer 11 and a controller 13”
`and that “controller 13 controls the [decoders] and the synthesizers 11 and
`12.” Ex. 1001, 3:18–19, 5:19–21. We further explained that “synthesizer 11
`and controller 13 both are shown and described in the ’676 patent as discrete
`hardware elements that interface with other hardware elements of the
`described information reproducing devices.” Inst. Dec. 14 (citing Ex. 1001,
`Fig. 7, 7:59–8:62). Thus, while acknowledging the correctness of Patent
`Owner’s argument in the Preliminary Response that when a
`means-plus-function term is directed to a computer programmed to carry out
`an algorithm, “the disclosed structure is not the general purpose computer,
`but rather the special purpose computer programmed to perform the
`disclosed algorithm,” we determined that the reproducing means recited in
`claims 5 and 8 is not a “computer-implemented” means-plus-function term
`directed to a computer programmed to carry out an algorithm subject to the
`legal rule that computer-implemented means-plus-function terms must be
`construed to include the corresponding algorithmic structure disclosed in the
`specification. Id. (quoting Prelim. Resp. 8 (quoting In re Aoyama, 656 F.3d
`1293, 1297 (Fed. Cir. 2011))). We further explained that the cases cited by
`Patent Owner in the Preliminary Response in support of its arguments do not
`support importation of an algorithm into the corresponding structure for a
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`non-computer-implemented means-plus-function limitation, and that, in
`contrast with the limitations at issue in those cases, we were persuaded that
`the reproducing means limitation of claims 5 and 8 has adequate
`corresponding structure that is neither a general-purpose computer nor a
`microprocessor. Id. at 14–15 (citing EON Corp. IP Holdings LLC v. AT&T
`Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015); Typhoon Touch Techs. v.
`Dell, Inc., 659 F.3d 1376, 1384 (Fed. Cir. 2011); Aoyama, 656 F.3d at 1297;
`Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008);
`WMS Gaming v. Int’l Game Tech., 184 F.3d 1339, 1347–48 (Fed. Cir.
`1999); ZTE Corp. v. ContentGuard Holdings, Inc., Case IPR2013-00139
`(PTAB July 9, 2013) (Paper 15)).
`In its Request for Rehearing, Patent Owner contended that we erred in
`instituting trial in this proceeding, arguing, inter alia, that we “mistakenly
`determined that unless a claim recites the terms ‘computer’ or
`‘microprocessor,’ it is not computer-implemented”; that “[a] ‘controller’ is
`nothing more than a broad class of devices that include a [central processing
`unit] CPU”; that the ’676 patent explicitly discloses an algorithm that
`controller 13 uses to carry out a determination of a channel to be synthesized
`or reproduced; that “[b]y proposing a construction where the controller
`implements an algorithm in the related district court litigation, Petitioners
`have at least admitted that the ‘reproducing means’ is
`computer-implemented”; and that we, accordingly, erred in finding that the
`reproducing means limitations recited in claims 5 and 8 are not
`computer-implemented and do not include an algorithm. Reh’g Req. 1, 4–5,
`7–8.
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`In the Rehearing Decision, we explained that, contrary to Patent
`Owner’s contentions, we did not determine in the Institution Decision that
`“unless a claim recites the terms ‘computer’ or ‘microprocessor,’ it is not
`computer-implemented”; that “the claimed controller is not a computer
`based solely on a word matching exercise”; or that the Board “is free to
`disregard the law on how computer-implemented means-plus-function terms
`are to be construed.” Reh’g Dec. 4 (citing Reh’g Req. 1–2). Rather, we
`explained, we simply were not persuaded on the record before us that a
`“controller” requires invocation of the rule applicable to
`computer-implemented means-plus-function limitations. See id. at 4–5.
`First, despite Patent Owner’s assertion that a controller includes a
`CPU (see, e.g., Reh’g Req. 1), we found no evidentiary support on the
`record for that assertion. Reh’g Dec. 4. While acknowledging that Patent
`Owner’s assertion might reflect one possible meaning of controller, we
`noted that “courts that have had occasion to construe the term ‘controller’ in
`various patents have interpreted that term, consistently with our finding in
`our Institution Decision that controller 13 is a discrete hardware elements,
`as, for example, a ‘device,’ ‘circuit[ry],’ or a ‘component.’” Id. at 5 (citing,
`e.g., AutoMed Techs., Inc. v. Microfil, LLC, 244 F. App’x 354, 357–58 (Fed.
`Cir. 2007) (affirming district court’s construction of “controller” as “single
`control system that regulates the entire process”); Braun Corp. v. Vantage
`Mobility Int’l, LLC, 608 F. Supp. 2d 1036, 1045 (N.D. Ind. 2009)
`(construing “controller” as “a device that actuates and/or directs the
`operation of other components, or is capable of making decisions with
`respect to the operation or actuation of those components, including being
`operable to selectively delay execution of the door operation commands”);
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`911EP v. Whelen Eng’g Co., 512 F. Supp. 2d 713, 724 (E.D. Tex. 2007)
`(concluding that “one of ordinary skill in the art would understand a
`‘controller’ to be a circuit or device that is either programmable or has a
`pre-determined function,” and that a “programmable controller” is merely
`“an aspect of a preferred embodiment that should not be read into the
`claims”) (emphasis added); Lexar Media, Inc. v. Fuji Photo Film USA, Inc.,
`No. C03-00355MJJ, 2007 WL 677166, at *4 (N.D. Cal. Mar 1, 2007)
`(construing “controller” as “a device that interfaces between a host and
`nonvolatile memory”); Koninklijke Philips Elecs., NV v. Defibtech LLC,
`No. C03-1322JLR, 2005 WL 3500783, at *6 (W.D. Wash. Dec. 21, 2005)
`(construing “controller” as “a circuit or component that controls”); ABB
`Automation Inc. v. Schlumberger Res. Mgmt. Servs., Inc., 254 F. Supp. 2d
`475, 477 (D. Del. 2003) (construing “controller” as “electronic circuitry that
`generates a control signal”); EMC Corp. v. Hewlett-Packard Co.,
`No. 00-40188-NMG, 2003 WL 25782750, at *9 (D. Mass. Sept. 12, 2003)
`(construing “data storage system controller” as “a device that controls data
`storage operations”)).
`Second, after considering Patent Owner’s argument, supported by
`Dr. Robert Stevenson’s now-withdrawn testimony,5 that the ’676 patent
`
`
`5 In support of the Preliminary Response, Patent Owner provided a
`Declaration of Robert Stevenson, Ph.D. (Ex. 2002). On March 29, 2017,
`however, after institution of this proceeding, Patent Owner informed the
`Board via email that it was withdrawing Dr. Stevenson’s Declaration in both
`this case and a related case—IPR2016-00835. See Tr. 15:21–23 (confirming
`withdrawal of Dr. Stevenson’s Declaration). Consistent with this
`notification, Patent Owner did not rely on this testimony in any of its
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`explicitly discloses an algorithm used by controller 13 (see Reh’g Req. 4–5),
`we explained that “algorithms are not the sole province of computers, and
`Patent Owner’s characterization of one disclosed sequence of operations to
`carry out a determination of a channel by the controller as an algorithm does
`not mean that the controller is computer-implemented.” Reh’g Dec. 6–7.
`Absent persuasive evidence that would support a threshold finding that the
`“reproducing means” of claims 5 and 8 are computer-implemented, we
`explained, we were not persuaded that it would be proper to read any
`algorithm from the specification into the claims. Id. at 7 (citing E.I. du Pont
`de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.
`1988) (holding that reading an “extraneous limitation” into a claim from the
`specification is improper)).
`We also were unpersuaded both by Patent Owner’s suggestion in the
`Request for Rehearing that “reproducing means” is “in part computer-
`implemented” based on “Petitioners’ . . . proposed construction for this term
`in the related district court litigation, where Petitioners argued that the
`corresponding structure for the term includes a specific algorithm shown in
`one of the figures of the ’676 patent” and by its characterization of Netgear,
`Inc. v. Ruckus Wireless, Inc., 5 F. Supp. 3d 592, 622 (D. Del. 2013), as
`“finding [a] means-plus-function term indefinite because the specification
`merely disclosed a generic ‘controller’ for carrying out the claimed function
`without a corresponding algorithm.” Reh’g Req. 4, 8. With respect to the
`first argument, we explained that claim construction is a matter of law, and
`
`
`post-filing briefs. We, therefore, did not consider Dr. Stevenson’s
`Declaration for purposes of this Decision.
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`the determination as to whether the “reproducing means” recited in claims 5
`and 8 is “computer-implemented” does not turn on arguments made by
`Petitioner in another proceeding. Reh’g Dec. 7. Regarding the second
`argument, we explained that the court’s conclusion of indefiniteness in
`Netgear was based on a failure to disclose algorithms for three other
`elements of the claims at issue in that case, not the term “controller.” Id. at
`7–8.
`
`In the Patent Owner Response, Patent Owner again asserts that the
`recited reproducing means is computer-implemented and must be construed
`to include algorithmic structure. PO Resp. 10–14. In support of that
`assertion, Patent Owner again cites Netgear for the proposition that “courts
`have applied the algorithm requirement in the context of ‘controllers’ just as
`they have for ‘computers’ and ‘microprocessors’” (id. at 11 (citing Netgear,
`5 F. Supp. 3d at 622)).
`Citing two definitions of the term “microcontroller” from online
`dictionaries, both dated February 2, 2017, Patent Owner further contends:
`The ’676 patent is directed to a consumer electronics
`device. (See, e.g., Ex. 1001 at 1:11–15, noting that the invention
`relates to a recording medium and reproducing device for
`compact disks, video disks, and magneto-optical disks.) In
`reproducing the recording medium by using the reproducing
`device of the present invention, the ’676 patent explicitly states
`that the processing as shown in FIG. 16 is executed. Ex. 1001 at
`11:10–12. Thus, at least in the consumer electronics context of
`the ’676 patent,
`the algorithm requirement applies for
`“controllers”
`just
`as
`it does
`for
`“computers”
`and
`“microprocessors” because while a CPU is generally understood
`as including only a processor, in the consumer electronics
`context, a controller or microcontroller is a broader class of
`devices that may not just include a processor, but also have
`
`16
`
`
`
`IPR2016-00834
`Patent 6,097,676
`
`
`functionality such as storage and
`additional on-board
`communication processing.
`For example, Merriam-Webster defines “microcontroller”
`as “a microprocessor that controls some or all of the functions of
`an electronic device (as a home appliance) or system.” See
`Ex. 2005 at 2. Similarly, the PC Magazine Encyclopedia defines
`“microcontroller” as:
`“A single chip that contains the processor
`(the CPU), non-volatile memory for the program
`(ROM or flash), volatile memory for input and
`output (RAM), a clock and an I/O control unit.
`Available in numerous sizes and architectures, and
`also called a ‘computer on a chip,’ billions of
`microcontroller units (MCUs) are embedded each
`year in products from toys to appliances to
`automobiles. For example, a car or truck can
`employ 70 or more microcontrollers
`(see
`automotive systems). See CPU, RAM, ROM and
`clock.”
`See Ex. 2006. Thus, the class of devices referred to as
`“controllers” in the ’676 patent clearly require algorithms to the
`same extent as individual microprocessors or computers,
`consistent with Federal Circuit precedent. See e.g., Aoyama, 656
`F.3d at 1297.
`Here, the ’676 specification specifically discloses an
`algorithm that is carried out by the controller in performing the
`recited function of the “reproducing means.” See Ex. 1001 at
`11:10-32. The specification does not link a generic, off-the-shelf
`controller, and for good reason. Without any programming, a
`“controller”—just like a “computer” or “microprocessor”—
`would not be able to perform the claimed processing function.
`On the contrary, the specification explains in detail (at 11:10-32)
`the algorithm that the controller performs in carrying out the
`claimed processing function.
`Id. at 12–14.
`
`17
`
`
`
`IPR2016-00834
`Patent 6,097,676
`
`
`Patent Owner further contends the construction adopted in the
`Institution Decision “is clearly wrong because it does not limit the
`‘reproducing means’ to what the ’676 patent actually discloses” and
`“violates the fundamental quid pro quo of means-plus-function claiming by
`allowing the claim to read on any generic controller that aids in reproducing
`audio, rather than limiting the claim to the structure disclosed in the
`specification that corresponds to the claimed function of reproducing a
`channel designated by a default value of a memory.” Id. at 9.
`According to Patent Owner, “a controller as described and claimed in
`the ’676 patent cannot ‘reproduce[] the audio data of the channel designated
`by the default value stored in the storing means’ without an algorithm
`instructing it on when, and how to do such processing.” Id. at 5. While
`acknowledging the cases cited in our Rehearing Decision relating to
`construction of the term “controller,” Patent Owner contends that those cases
`“are entirely divorced from the context of the functions recited in Patent
`Owner’s claims and specification,” and that “[n]one of this case law is at all
`relevant to the question here, which is: How can a controller possibly
`implement the claimed processing function of the ‘reproducing means’ as
`described in the specification without the algorithm disclosed therein?” Id.
`at 6.
`
`Patent Owner further contends that “[b]y acknowledging that the
`corresponding structure [for the reproducing means] includes a controller
`that performs the ‘selecting,’ Petitioners acknowledged that the ‘reproducing
`means’ is, in part, computer-implemented and requires an algorithm.” Id. at
`7. According to Patent Owner, “the ’676 patent discloses an algorithm that
`the controller uses to perform the selecting processing (at least at [Ex. 1001,]
`
`18
`
`
`
`IPR2016-00834
`Patent 6,097,676
`
`11:10–32)” and “does not rely on a generic hardware ‘controller’ alone to
`perform this function.” Id. Patent Owner alleges that it is “well-known”
`that “off-the-shelf controllers require programming to perform particular
`tasks.” Id.
`Patent Owner further contends that “[b]y stipulating to a construction
`where the controller implements an algorithm in the related district court
`litigation, Petitioners have at least admitted that the ‘reproducing means’ is
`computer-implemented,” and that “judicial estoppel prevents Petitioners
`from arguing for a broad construction here (i.e., not limiting the term to the
`corresponding algorithm) for purposes of unpatentability while pursuing a
`more narrow construction (i.e., agreeing that the term is limited by the
`corresponding algorithm) in the district court for purposes of infringement.”
`Id. at 8 & n.1.
`In its Reply, Petitioner responds that Patent Owner provides no reason
`to depart from the claim construction adopted in the Institution Decision.
`See generally Reply 5–17.
`First, Petitioner contends that the Board correctly determined that the
`controller is not limited to computer-implemented applications and can be
`implemented in hardware, pointing to the cases cited in our Rehearing
`Decision in support. Id. at 6–8 (citing Inst. Dec. 12–14; Reh’g Dec. 4, 5 &
`n.2; AutoMed Techs., 244 F.App’x at 357–58; Braun, 608 F. Supp. 2d at
`1045; Lexar Media, 2007 WL 67716
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