Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 58
`Entered: March 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00340
`Patent 7,260,538 B2
`____________
`
`
`
`Before JAMESON LEE, ROBERT L. KINDER, and
`ALEX S. YAP, Administrative Patent Judges.
`
`YAP, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 58
`Entered: March 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00340
`Patent 7,260,538 B2
`____________
`
`
`
`Before JAMESON LEE, ROBERT L. KINDER, and
`ALEX S. YAP, Administrative Patent Judges.
`
`YAP, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2018-00340
`Patent 7,260,538 B2
`
`
`INTRODUCTION
`I.
`Petitioner, Comcast Cable Communications, LLC. (“Comcast”), filed
`a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–7,
`17–24, and 33 of U.S. Patent 7,260,538 B2 (Ex. 1001, “the ’538 Patent”).
`We instituted review of claims 1–7, 17–24, and 33 on all grounds asserted in
`the Petition. Paper 10. Patent Owner, Promptu Systems Corporation
`(“Promptu”), filed a Response. Paper 20 (“Resp.”). Petitioner filed a Reply
`(Paper 29) and Patent Owner filed a Sur-Reply (Paper 37). An oral hearing
`was held on January 28, 2019. A copy of the transcript for the oral hearing
`has been entered as Paper 55 (“Tr.”).
`As discussed below, Petitioner has not shown, by a preponderance of
`the evidence, that any of claims 1–7, 17–24, and 33 is unpatentable under
`any asserted grounds.
`
`Related Matters
`A.
`The ’538 Patent is the subject of a pending civil action, Promptu
`
`Systems Corporation v. Comcast Corporation and Comcast Cable
`Communications, LLC, Case No. 2:16-cv-06516 (E.D. Pa.). Patent Owner’s
`Mandatory Notices (Paper 6), 2. Another petition for inter partes review has
`been filed by Petitioner on this patent in IPR2018-00341, which is pending
`before the Board. Pet. xii; see also IPR2018-00341, Paper 1. According to
`Patent Owner, the District Court stayed the pending civil action after the
`Board instituted trial in this matter. Patent Owner’s Updated Mandatory
`Notice (Paper 16), 2.
`
`The ’538 Patent
`B.
`The ’538 Patent, titled “Method and Apparatus for Voice Control of a
`
`Television Control Device,” was issued on August 21, 2007. Ex. 1001, [45].
`
`2
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`Patent 7,260,538 B2
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`It issued from U.S. Patent Application 10/338,591, filed on January 7, 2003,
`and claims the benefit of U.S. Provisional Application No. 60/346,899 filed
`on January 8, 2002. Id. at [21], [22], [60]. The ’538 Patent generally relates
`to a “method and apparatus [] for remotely processing voice commands for
`controlling a television.” Ex. 1001, Abstract. Figure 1 of the ’538 Patent is
`reproduced below.
`
`
`Figure 1 “is a diagram illustrating elements of the voice control television
`system according to the invention.” Id. at 2:52–53. According to the
`Specification, a “problem with the prior art voice recognition systems is that
`they require a sophisticated voice recognition system in close proximity to
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`the user, requiring individual units[,] which is quite costly.” Id. at 1:59–62.
`The Specification discloses “method and apparatus [] for remotely
`processing voice commands,” purportedly solving one of the alleged
`problems in prior art systems. Id. at Abstract. A user’s voice command “is
`received by a microphone contained in a [] remote control.” Id. at 2:23–25.
`The microphone in the remote control “is activated by the depression of a
`push-to-talk (PTT) button or by word activation.” Id. at 2:41–42. “The
`voice command is modulated and wirelessly transmitted to a wireless
`receiver connected to the set-top box.” Id. at 2:25–26. “The voice
`command is then transmitted, for example, to a central processing station
`located at a cable television head-end unit[, which] processes the voice
`command for voice command recognition.” Id. at 2:29–33. “Once the voice
`command is determined a command function is created [and] transmitted
`back to the set-top box where the set-top box performs the command
`function.” Id. at 2:33–37.
`Challenged Claims
`C.
`Claims 1, 2, 18, and 19 are independent. Claims 1 and 2 are method
`
`claims “for providing voice recognition processing at a cable television
`head-end unit.” Id. at 9:20–21, 41–42. Claims 18 and 19 are apparatus
`claims directed to apparatus “for providing voice recognition processing at a
`cable television head-end unit” (id. at 11:26–27, 56–57). Claims 3–7 and 17
`depend directly or indirectly from claim 2. Claims 20–24 and 33 depend
`directly or indirectly from claim 19. Independent claims 1 and 18,
`reproduced below, are illustrative of the challenged claims.
`
`4
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`IPR2018-00340
`Patent 7,260,538 B2
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`
`1. A method for providing voice recognition processing at a
`cable television head-end unit for a plurality of voice controlled
`television cable set-top boxes in a cable television network,
`comprising the steps of:
`a television remote control receiving user-activated
`indication of a voice command;
`receiving said voice command through a microphone
`associated with said television remote control;
`said television remote control wirelessly transmitting a
`signal representing said voice command to a cable set-top box;
`said cable set-top box transmitting a signal representing
`said voice command via cable television link to a remotely
`located head-end unit;
`processing said voice command at said head-end unit;
`the head-end unit deriving a set-top-box-compatible
`command function corresponding to said voice command;
`the head-end unit transmitting said command function to
`said cable set-top box via the cable television link;
`performing said command function at said cable set-top
`
`box.
`Ex. 1001, 9:20–40.
`18. An apparatus for providing voice recognition processing
`at a cable television head-end unit for a plurality of voice
`controlled television cable set-top boxes in a cable television
`network, comprising:
`a television remote control including: activation means for
`receiving user-activated indication of a voice command,
`microphone means for receiving the voice command, and
`transmission means for wirelessly
`transmitting a signal
`representing the voice command to a cable television controller;
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`
`a cable television controller including receiver means for
`receiving the signal representing the voice command from the
`television remote control and transmitter means for transmitting
`a signal representing the voice command via cable television link
`to a remotely located head-end unit;
`a head-end unit including processing means for deriving
`cable-television-controller-compatible
`command
`functions
`corresponding to signals representing the voice commands
`received from the cable television controllers, and transmission
`means for transmitting signals representing the command
`functions back to respective cable television controllers;
`where the cable television controller additionally includes
`second receiver means for receiving the signals representing the
`command functions from the head-end unit via the cable
`television link, and where the cable television controller includes
`means responsive to receipt of the command functions for
`executing the command functions.
`Ex. 1001, 11:26–55.
`
`References Relied Upon
`D.
`Petitioner relies on the following references:
`
`Exhibit
`
`1017
`
`1018
`
`1019
`
`Reference
`United States Patent No. 6,513,063 B1, filed March 14,
`2000 (“Julia”).
`
`United States Patent No. 7,013,283 B1, filed November
`
`16, 2000 (“Murdock”).
`
`United States Patent No. 5,774,859, issued June 30, 1998
`(“Houser”).
`
`Pet. 2–3. Petitioner also relies on the Declaration of Anthony
`Wechselberger (Ex. 1022, “Wechselberger Declaration”), the Reply
`Declaration of Anthony Wechselberger (Ex. 1032), and the Declaration of
`Daniel C. Callaway (Ex. 1021).
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`
`Julia (Ex. 1017)
`1.
`Julia describes a “navigation of electronic data by means of spoken
`natural language requests.” Ex. 1017, 1:16–18. Figure 1a of Julia is
`reproduced below.
`
`
`Figure 1a “illustrates a system providing a spoken natural language interface
`for network-based information navigation . . . with server-side processing of
`requests.” Id. at 3:6–9. “[A] user’s voice input data is captured by a voice
`input device 102, such as a microphone[, which p]referably [] includes a
`button or the like that can be pressed or held down to activate a listening
`mode.” Id. at 3:39–43. Input device 102 can be also be “a portable remote
`control device with an integrated microphone, and the voice data is
`transmitted from device 102 preferably via infrared (or other wireless) link
`to [a receiver in] communications box 104.” Id. at 3:46–52. “The voice data
`is then transmitted across network 106 to a remote server or servers 108.”
`Id. at 3:54–55. The voice data “is processed by request processing logic 300
`
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`Patent 7,260,538 B2
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`in order to understand the user’s request and construct an appropriate query
`or request for navigation of remote data.” Id. at 3:61–64. “Once the desired
`information has been retrieved from data source 110, it is electronically
`transmitted via network 106 to the user for viewing on client display device
`112.” Id. at 4:18–20. Communications box 104 is used for “receiving and
`decoding/formatting the desired electronic information that is received
`across communications network 106.” Id. at 4:27–30. It is “preferabl[e to
`use] the same [] communications box 104, but [it] may also be a separate
`unit) for receiving and decoding/formatting the desired electronic
`information that is received across communications network 106.” Id. at
`4:25–30.
`
`2. Murdock (Ex. 1018)
`Murdock describes a “system and a concomitant method for providing
`programming content in response to an audio signal.” Ex. 1018, Abstract.
`Figure 1 of Murdock is reproduced below.
`
`
`Figure 1 “depicts a high-level block diagram of a voice control system.”
`
`8
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`Ex. 1018, 1:64–65. The program control device 110 can be “a portable or
`hand-held controller.” Id. at 2:35–36. It can “capture[] the input verbal
`command signal from the user of the voice activated control system 100.”
`Id. at 2:22–24. “Once the input command signal is received, the program
`control device 110 performs a transmission, e.g., a wireless transmission, of
`the command signal to the local processing unit 120,” which “may include a
`set top terminal, a cable box, and the like.” Id. at 2:31–34, 45–47. The input
`command signal is then transmitted to remote server computer 130 via back
`channel 134. Id. at 3:1–12. Remote server computer 130 “performs speech
`recognition on the received signal, . . . retrieves the requested program
`content from a program database and transmits the retrieved program
`content via the forward channel 132 to the local processing unit 120.” Id. at
`3:15–36. “Upon receipt of the requested programming content, the local
`processing unit 120 transmits the received content to the video player
`122 or the television recorder 124.” Id. at 2:61–66.
`Houser (Ex. 1019)
`3.
`Houser describes a “system for controlling a device such as a
`television and for controlling access to broadcast information such as video,
`audio, and/or text information.” Ex. 1019, Abstract. Figure 1 of Houser is
`reproduced below.
`
`9
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`Figure 1 of Houser “is a generalized block diagram of an information system
`in accordance with” the claimed invention. Ex. 1019, 4:60–61. A remote
`control, which includes a microphone, captures “sounds or words spoken by
`a user” and transmits the sound data signals to terminal unit 16. Id. at 6:33–
`7:24. “Terminal unit 16 includes a processor for executing a speech
`recognition algorithm . . . to recognize, for example, commands for
`controlling device 18 or commands for accessing information transmitted by
`information distribution center 12.” Id. at 5:62–5:67. The information is
`then retrieved from “information distribution center 12[,] which receives
`information from one or more remotely located information providers
`14-1, . . . 14-n[,] and supplies or broadcasts this information to a terminal
`unit 16.” Id. at 5:39–44. “Terminal unit 16 then [] generates a command for
`controlling device 18.” Id. at 5:67–6:2. “Device 18 may be any device
`[that] is capable of being operated in response to user supplied commands.”
`Id. at 7:27–29.
`
`10
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`
`Asserted Grounds of Unpatentability
`E.
`Petitioner challenges claims 1–7, 17–24, and 33 of the ’538 Patent
`
`based on the asserted grounds of unpatentability set forth in the following
`table. Pet. 1–3, 17–58.
`
`Ground
`
`Reference(s)
`
`Basis1
`
`Claims
`Challenged
`§ 103(a) 1–7, 17–24, and 33
`
`§ 103(a) 1–7, 17–24, and 33
`
`§ 103(a) 1–7, 17–24, and 33
`
`Julia
`
`Julia and Houser
`
`Murdock
`
`1
`
`2
`
`3
`
`4
`
`
`Murdock and Houser
`
`§ 103(a) 1–7, 17–24, and 33
`
`II. ANALYSIS
`
`Level of Ordinary Skill in the Art
`A.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). In that regard, Petitioner and Mr. Wechselberger contend
`that a person of ordinary skill in the relevant art would have:
`(i) an undergraduate degree (or equivalent) in electrical
`engineering, computer science, or a comparable subject and at
`
`1 The relevant section of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`from which the ’538 Patent issued was filed before that date, the pre-AIA
`statutory framework applies.
`
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`least three years of work experience in the field of analog and
`digital television systems with exposure to interactive networks
`and associated control technologies; or (ii) an advanced degree
`(or equivalent) in electrical engineering, computer science, or a
`comparable subject and at least one year of post-graduate
`research or work experience in the same field.
`Pet. 7, emphases added; see also Ex. 1022 ¶¶ 101–102.
`Quoting Petitioner’s proposal for the level of ordinary skill to be
`applied in connection with the reviews of related patents, Patent Owner
`contends that a person of ordinary skill in the relevant art would have:
`(i) an undergraduate degree (or equivalent) in electrical
`engineering, computer science, or a comparable subject and at
`least three years of professional work experience in the field of
`multi-media systems including in particular speech recognition
`and control technologies, or (ii) an advanced degree (or
`equivalent) in electrical engineering, computer science, or a
`comparable subject and at least one year of post-graduate
`research or work experience in the field of multi-media systems
`including in particular speech recognition and control
`technologies.
`Resp. 7 (quoting Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp.,
`IPR2018-00342, Pet. at 8–9 (PTAB Dec. 19, 2017) (Paper 1)); see also
`Resp. 7–9 (asserting the level of ordinary skill as proposed by Petitioner in
`related IPR proceedings is appropriate for this case); Ex. 2033 ¶¶ 22–29
`(same). As Patent Owner explains, its proposed definition is the same as
`that proposed by Petitioner in Case Nos. IPR2018-00342, IPR2018-00343,
`IPR2018-00344, and IPR2018-00345 (“other Comcast IPR proceedings”),
`which differs from Petitioner’s proposed definition in this proceeding in that
`the proposed definition in those other Comcast IPR proceedings includes a
`further requirement that the person of ordinary skill in the art at the time of
`the invention must also have experience in the field of multi-media systems
`
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`“including in particular speech recognition and control technologies.”
`Resp. 6–9. Patent Owner explains that Petitioner’s proposed definition in
`this proceeding “would not necessarily include expertise with voice
`recognition technology, at least because ‘interactive networks and associated
`control technologies’ at the time of the invention for analog and digital
`television systems would not have included voice control, which was not
`commercially available (or well known) for television systems.” Id. at 8–9.
`Patent Owner also points out that “Promptu’s patents[, in this proceeding
`and the other Comcast IPR proceedings,] all relate to the same technology
`and claim various aspects of television voice command recognition and
`processing.” Id. at 6.
`
`We agree with Petitioner that the definitions for a person of ordinary
`skill in the art involving unrelated patents in different proceedings need not
`be the same in each proceeding. Reply 2–4. Although the patents in each
`proceeding before us are issued to the same assignee and have some of the
`same inventors, the specific goal of each patent differ between proceedings.
`We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent
`discloses a system that includes voice recognition processing,” it discusses
`voice recognition technology only as a component part of the system, and
`expertise in voice recognition technology was not required to understand the
`’538 Patent because it does not discuss any particular voice recognition
`techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr.
`Wechselberger that a practitioner would have understood how to implement
`existing voice recognition products in a cable television network without
`having special knowledge or experience with voice recognition algorithms.
`Id. ¶¶ 5–7.
`
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`For the foregoing reasons, we credit the testimony of
`
`Mr. Wechselberger regarding the person of ordinary skill in the art and
`adopt, with modification (e.g., removing the words “at least” from
`Petitioner’s proposed definition), Petitioner’s definition of a person of
`ordinary skill in the art:
`(i) an undergraduate degree (or equivalent) in electrical
`engineering, computer science, or a comparable subject and three
`years of work experience in the field of analog and digital
`television systems with exposure to interactive networks and
`associated control technologies; or
`(ii) a Master’s of Science degree (or equivalent) in electrical
`engineering, computer science, or a comparable subject and one
`year of post-graduate research or work experience in the same
`field.
`We further note that the prior art in the instant proceeding reflects the
`level of ordinary skill in the art at the time of the invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, as reflected
`in Julia, a person of ordinary skill in the art would have familiarity with
`using a spoken natural language as an input into control systems. See
`Ex. 1017, 1:39–48.
`
`Claim Construction
`B.
`General Principles
`1.
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b) (2017);2 Cuozzo
`
`
`2 A recent amendment to this rule does not apply here, because the Petition
`was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018)
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`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the
`use of the broadest reasonable interpretation standard as the claim
`construction standard to be applied in an inter partes review proceeding).
`Under the broadest reasonable interpretation standard, claim terms generally
`are given their ordinary and customary meaning as would be understood by
`one of ordinary skill in the art in the context of the entire disclosure. See In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Construction of a “means-plus-function” limitation under 35 U.S.C.
`§ 112, sixth paragraph, involves two steps: first identifying the function
`explicitly recited in the claim, and then identifying the corresponding
`structure set forth in the written description that performs the particular
`function set forth in the claim. Asyst Techs, Inc. v. Empak, Inc., 268 F.3d
`1364, 1369–70 (Fed. Cir. 2001).
`Petitioner proposes constructions for several terms in claim 18,
`including “activation means for receiving user-activated indication of a
`voice command,” “transmission means for wirelessly transmitting a signal
`representing the voice command to a cable television controller,”
`“processing means for deriving cable-television-controller-compatible
`command functions . . . ,” and “means responsive to receipt of the command
`functions.” Pet. 8–11. Patent Owner takes no position as to any of these
`terms. See generally Resp. Petitioner acknowledges, and we are persuaded
`on the record before us, that these are means-plus-function limitations that
`should be construed in accordance with 35 U.S.C. § 112, ¶ 6. See id.
`
`
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (to be
`codified at 37 C.F.R. pt. 42).
`
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`
`•
`
`2. “activation means for receiving user-activated indication of
`a voice command”
`Petitioner proposes the following construction for “activation means
`for receiving user-activated indication of a voice command”:
`Function:
`•
`“receiving user-activated indication of a
`voice command”;
`Structure: “push to talk (PTT) button” or “a word
`recognition unit” and equivalents3.
`Pet. 8 (citing Ex. 1022 ¶¶ 106–108; Ex. 1001 4:36–40, 7:37–40, Fig. 2).
`Patent Owner does not propose an alternative construction nor does Patent
`Owner respond to Petitioner’s proposal. See generally Resp. Based on our
`review of the record before us, we partially adopt Petitioner’s proposed
`construction for the recited function but find the corresponding structure to
`be: “‘push to talk (PTT) button’ or ‘a voice processor and a buffer’ and
`equivalents.” Specifically, we replace “a word recognition unit” in the
`proposed corresponding structure with “a voice processor and a buffer”
`because “word recognition unit” is a functional recitation and does not
`identify any particular structure. The Specification refers to the “word
`recognition unit [a]s typically constructed of a voice processor and a buffer.”
`See Ex. 1001, 7:42–44.
`
`
`3 We read “equivalents” in Petitioner’s proposed constructions for means
`plus function elements as referring to equivalents of the identified
`corresponding structure.
`
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`3. “transmission means for wirelessly transmitting a signal
`representing the voice command to a cable television
`controller”
`Petitioner proposes the following construction for “transmission
`means for wirelessly transmitting a signal representing the voice command
`to a cable television controller”:
`• Function: “wirelessly transmitting a signal representing
`the voice command to a cable television controller”;
`• Structure: “transmitter 224,” which can be a “radio
`frequency (RF) transmitter” or an “infrared transmitter,”
`and equivalents.
`Pet. 8–9 (citing Ex. 1022 ¶¶ 113–115; Ex. 1001, 2:54–56, 2:62–64, 4:37–40,
`4:51–55, 11:33–35, Fig. 2). Patent Owner does not propose an alternative
`definition nor does Patent Owner respond to Petitioner’s proposal. See
`generally Resp. Based on our review of the record before us, we adopt
`Petitioner’s proposed construction for this term.
`
`4. “processing means for deriving cable-television-controller-
`compatible command functions . . .”
`Petitioner proposes the following construction for “processing means
`for deriving cable-television-controller-compatible command functions . . .”:
`Function:
`•
`“deriving cable-television-controller-
`compatible command functions corresponding to signals
`representing the voice commands received from the cable
`television controllers”;
`Structure: “speech recognition processor 670” and
`equivalents.
`Pet. 9 (citing Ex. 1022 ¶¶ 124–126; Ex. 1001, 5:46–56). Patent Owner does
`not propose an alternative definition nor does Patent Owner respond to
`Petitioner’s proposal. See generally Resp. Based on our review of the
`record before us, we adopt Petitioner’s proposed construction for this term.
`
`•
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`5. “means responsive to receipt of the command functions for
`executing the command functions”
`Petitioner proposes the following construction for “means responsive
`to receipt of the command functions for executing the command functions”:
`Function: “executing the command functions”;
`•
`•
`Structure: “a processor” and equivalents.
`Pet. 10–11 (citing Ex. 1022 ¶¶ 136–138; Ex. 1001, 3:51–52, 4:20–24,
`11:53–55). First, regarding the recited function, claim 18 includes the
`recitation “responsive to receipt of the command functions.” That is, the
`recited function is “responsive to receipt of the command functions for
`executing the command functions.” Neither Petitioner nor its expert
`explains why it is appropriate to remove “responsive to receipt of the
`command functions for” from the recited function. Pet. 10–11; Ex. 1022
`¶ 137.
`Next, Petitioner is required to identify “the specific portions of the
`specification that describe the structure, material, or acts corresponding to
`each claimed function.” 37 C.F.R. § 42.104(b)(3). As the Federal Circuit
`has noted, “‘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. This duty to
`link or associate structure to function is the quid pro quo for the convenience
`of employing § 112, ¶ 6.’” Saffran v. Johnson & Johnson, 712 F.3d 549,
`562 (Fed. Cir. 2013) (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d
`1419, 1424 (Fed. Cir. 1997)). We are not persuaded that Petitioner has
`identified sufficient corresponding structure for this means-plus-function
`limitation.
`
`18
`
`
`
`IPR2018-00340
`Patent 7,260,538 B2
`
`
`Here, Petitioner contends that the corresponding structure for
`performing the recited function is “‘a processor’ and equivalents.” Pet. 11.
`Petitioner’s expert further opines that “the patent identifies the Motorola
`DCT-2000 set-top box (’538 Patent[,] 3:51–52), and a person of ordinary
`skill in the art would have known that the DCT-2000 includes a processor
`that executes command functions from the cable head-end.” Ex. 1022 ¶ 138.
`However, for means-plus-function limitations,
`[i]f special programming is required for a general-purpose
`computer to perform the corresponding claimed function, then
`the default rule requiring disclosure of an algorithm applies. It
`is only in the rare circumstances where any general-purpose
`computer without any special programming can perform the
`function that an algorithm need not be disclosed.
`Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed.
`Cir. 2012); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352
`(Fed. Cir. 2015) (en banc) (“In cases . . . involving a claim limitation that is
`subject to § 112, para. 6 that must be implemented in a special purpose
`computer, this court has consistently required that the structure disclosed in
`the specification be more than simply a general purpose computer or
`microprocessor[; it must] disclose an algorithm for performing the claimed
`function.”) (citations omitted); Aristocrat Techs. Austl. Party Ltd. vs. Int’l
`Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
`We decline to adopt Petitioner’s proposed construction because
`Petitioner has not explained sufficiently that the recited function for this
`term (“responsive to receipt of the command functions for executing the
`command functions”) is a basic computer function that would not require a
`special purpose computer, nor has Petitioner directed us to any portion of the
`
`19
`
`
`
`IPR2018-00340
`Patent 7,260,538 B2
`
`Specification sufficient to link a structure (i.e., an algorithm)4 to the recited
`function. The reference to “a processor” without specifying the algorithm is
`too generic to identify any specific structure. In Aristocrat, the Federal
`Circuit stated that “the corresponding structure for a § 112 ¶ 6 claim for a
`computer-implemented function is the algorithm disclosed in the
`specification.” Id., emphasis added. As the Federal Circuit explained, “a
`general purpose computer programmed to carry out a particular algorithm
`creates a ‘new machine’ because a general purpose computer ‘in effect
`becomes a special purpose computer once it is programmed to perform
`particular functions pursuant to instructions from program software.’” 521
`F.3d at 1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249
`(Fed. Cir. 2005)); see also WMS Gaming, Inc. v. Int’l Game Techs., 184 F.3d
`1339, 1349 (Fed. Cir. 1999). Consequently, the specification must disclose
`enough of a specific algorithm to provide the necessary structure under §
`112, sixth paragraph. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323,
`1340 (Fed. Cir. 2008). Allowing a computer programmed to perform a
`specialized function to be claimed without disclosure of the algorithm used
`for that programming would exhibit the same type of impermissible
`overbreadth of purely functional claims. Net MoneyIN, Inc. v. VeriSign,
`Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).
`If special programming is required for a general-purpose
`computer to perform the corresponding claimed function, then
`the default rule requiring disclosure of an algorithm applies. It
`is only in the rare circumstances where any general-purpose
`computer without any special programming can perform the
`function that an algorithm need not be disclosed.
`
`
`4 We do not opine on whether the Specification contains such an algorithm.
`
`20
`
`
`
`IPR2018-00340
`Patent 7,260,538 B2
`
`Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed.
`Cir. 2012).
`
`Here, by simply noting that “a processor” can perform the recited
`function of “responsive to receipt of the command functions for executing
`the command functions,” Petitioner has not identified the underlying
`algorithm to perform the recited function. Petitioner has not made the case
`that this falls within the narrow exception explained in In re Katz Interactive
`Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011),
`where the function recited is generic and can be performed by any general-
`purpose computer without special programming, e.g., “processing,”
`“receiving,” “storing.” Petitioner makes no explanation as to why the
`recited function would be so basic that it could be performed by “a
`processor” without any special programming. Accordingly, Petitioner has
`not identified corresponding structure, described in the Specification of the
`’538 Patent, that causes a computer to perform the recited function of
`“responsive to receipt of the command functions for executing the command
`functions.”
`
`6. Other Terms Containing “means for”
`Petitioner proposes that the following terms, in claim 18, containing
`the words “means for” should not be construed as means-plus-function
`terms: “microphone means for . . . ,” “receiver means for . . . ,” “transmitter
`means for . . . ,” and “second receiver means for . . . .” Pet. 11 (citing to
`Ex. 1022 ¶¶ 109–112, 116–119, 120–123, 131–135). Patent Owner does not
`propose any alternative definitions nor does Patent Owner respond to
`Petitioner’s proposal. See generally Resp.
`
`21
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`IPR2018-00340
`Patent 7,260,538 B2
`
`
`The use of the term “means” triggers a rebuttable presumption that
`§ 112, ¶ 6 applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed.
`Cir. 2008). One way in which this presumption can be overcome is if “the
`claim recites suff
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