Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 9
`Date: March 26, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COMMUNICATIONS TEST DESIGN, INC.,
`Petitioner,
`
`v.
`
`CONTEC, LLC,
`Patent Owner.
`_______________
`
`IPR2019-01670
`Patent 8,209,732 B2
`_______________
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571.272.7822
`
`
`Paper No. 9
`Date: March 26, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COMMUNICATIONS TEST DESIGN, INC.,
`Petitioner,
`
`v.
`
`CONTEC, LLC,
`Patent Owner.
`_______________
`
`IPR2019-01670
`Patent 8,209,732 B2
`_______________
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2019-01670
`Patent 8,209,732 B2
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`I. INTRODUCTION
`Communications Test Design, Inc. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–25 of U.S. Patent No. 8,209,732
`B2 (Ex. 1001, “the ’732 patent”). Paper 1 (“Pet.”). Contec, LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”), Petitioner
`filed a Reply (Paper 7, “Reply”), and Patent Owner filed a Sur-Reply (Paper
`8, “Sur-Reply”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). Having considered the Petition, the Preliminary Response, the
`Reply, and the Sur-Reply, and the associated evidence, we conclude that the
`information presented in the Petition demonstrates a reasonable likelihood
`that Petitioner would prevail in showing the unpatentability of at least one of
`the challenged claims. Accordingly, we institute an inter partes review on
`all grounds presented in the Petition.
`A. Related Proceedings
`Patent Owner has asserted the ’732 patent against Petitioner in
`Contec, LLC v. Communications Test Design, Inc., No. 1:18-cv-1172 (N.D.
`N.Y.). Pet. 1; Paper 5, 1. In addition, Petitioner filed a declaratory
`judgment action seeking a declaration of non-infringement of the ’732
`Patent in Communications Test Design, Inc. v. Contec, LLC, No. 2:18-cv-
`4077 (E.D. Pa.), which was dismissed; the dismissal is presently under
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`appeal to the United States Court of Appeals for the Federal Circuit in
`Appeal No. 19-1672. Pet. 1; Paper 5, 1.
`B. The ’732 Patent
`The ’732 patent is titled “Arrangement and Method for Managing
`Testing and Repair of Set-Top Boxes” and issued on June 26, 2012, from
`U.S. Application No. 11/904,347, filed September 27, 2007. Ex. 1001,
`codes (21), (22), (45), (54). The ’732 patent relates generally to an
`arrangement and method of managing diagnostic testing of television set-top
`boxes for different operational errors, and coordinating repair of defective
`set-top boxes. Id. at 1:7–14.
`The ’732 patent discloses one or more remote location screening
`(“RLS”) tester(s) 12, each of which is “designed for installation at a content
`service provider’s warehouse or other facility where set-top boxes, which
`customers believe to be malfunctioning, are gathered.” Id. at 5:45–48,
`Fig. 1. The tester “includes a processor and associated electronic or
`computer hardware and software to enable the processor to communicate
`with the set-top boxes 14 and run one or more computer programs designed
`to perform diagnostic testing of the set-top boxes 14.” Id. at 5:48–52, Fig. 1.
`The ’732 patent also discloses that, for overall monitoring, there is
`“main server 16 which is coupled through the network to all of the RLS
`testers 12” and which could be programmed to provide the computer
`programs to the testers for testing the different models and makes of set-top
`boxes. Id. at 6:6–8, 6:12–16, Fig. 1. Main server 16 “preferably includes a
`master remote location screening database which filters, i.e., collects,
`validates and retains, data” sent to main server 16 by RLS testers 12. Id. at
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`6:20–23, Fig. 1. The ’732 patent explains that main server 16 also “includes
`one or more computer programs which process the information being
`provided” by RLS testers 12, “e.g., sorts or categorizes the information, and
`stores this information” at main server 16 or another location linked through
`a network to main server 16. Id. at 6:31–35, Fig. 1.
`In addition, the ’732 patent discloses billing system 18 “is preferably
`coupled to the main server 16 and manages fees for using” RLS testers 12.
`Id. at 6:47–48, Fig. 1. The ’732 patent explains that this may involve
`“invoicing the content service providers” for testing the set-top boxes,
`repairing malfunctioning set-top boxes, and possibly also shipping charges
`for shipping set-top boxes from one location to another to be repaired. Id. at
`6:48–52.
`The ’732 patent discloses “numerous advantages of placing the RLS
`tester 12 at the warehouse or other facility of the content service provider at
`which set-top boxes 14 are gathered after being returned by customers on the
`grounds of the presence of a malfunction,” such as testing “faster,
`simultaneously and more accurately” than manual tests. Id. at 7:14–24,
`Fig. 1. Also, because a warehouse-located tester “provides an immediate
`indication when a set-top box 14 passes testing, the set-top box can be
`immediately processed for redeployment to a customer,” rather than
`traveling to and from a testing facility. Id. at 7:35–44, Fig. 1. Further, with
`“an indication of the problem with the set-top box 14, it now becomes
`possible to fix certain problems at the warehouse dispensing with the need to
`ship the set-top boxes 14 to the repair facility.” Id at 7:7:49–53, Fig. 1.
`Figure 2 of the ’732 patent is reproduced below.
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`Figure 2 depicts a flow chart of an exemplifying process by which a
`set-top box is tested and scheduled for repair if needed. Id. at 10:21–23.
`Once a set-top box is received at a facility at which the content service
`provider gathers set-top boxes returned from customers, it is connected to
`RLS tester 12 and a determination is made if it passed or failed the test. Id.
`at 10:23–30, Fig. 2. If the unit passed the test, it is cleaned and any damaged
`parts are replaced, and it is then considered ready for re-deployment; if it
`failed, the unit is prepared for shipment to a central facility for repair and
`then shipped. Id., 10:30–36, Fig. 2. Main server 16 is notified by RLS
`tester 12 of whether the set-top box passed or failed the test, “preferably
`with particular results of the test and data about the set-top box 14,” which
`information may be directed to “data storage facility at 44, and also to the
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`billing system 18, at 46, to coordinate payment for the testing and possible
`repair.” Id. at 10:37–46, Figs. 1, 2.
`C. Challenged Claims
`Petitioner challenges claims 1–25 of the ’732 patent. Claims 1, 11,
`and 15 are independent claims. Claim 1 is illustrative of the challenged
`claims and reproduced below (with paragraph lettering and certain
`formatting added as in the Petition):
`1. [Preamble] An arrangement for managing set-top boxes used by
`customers of a content service provider after the set-top boxes have
`been disconnected by the customers from their equipment, returned by
`the customers to the content service provider such that the set-top
`boxes are no longer in possession of the customers, and moved to a
`common testing facility maintained by the content service provider,
`comprising:
`[a] at least one automated tester each arranged to couple to at least one
`set-top box, after having been returned by a customer to the content
`service provider and moved to the common testing facility, [b] and
`subject each set-top box, when coupled to said at least one automated
`tester and not to the customer's equipment, to a series of automated
`tests to determine whether each set-top box is functioning properly or
`requires subsequent repair, [c] said at least one automated tester being
`arranged to categorize each tested set-top box into one of a plurality of
`different categories, the categories including one in acceptable
`working order, one having a problem that can be resolved at the
`testing facility and one having a problem that requires subsequent
`shipment to a repair facility; and
`[d] a processor unit coupled to said at least one automated tester for
`receiving test results from said at least one automated tester and
`monitoring testing of set-top boxes via said at least one automated
`tester,
`
`[e] said processor unit being arranged to:
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`coordinate shipment of the set-top boxes, after having been returned
`by customers to the content service provider, moved to the common
`testing facility and categorized as having a problem that requires
`shipment to the repair facility by the at least one automated tester, by
`the content service provider from the testing facility, at which the set-
`top boxes have been categorized as having a problem that requires
`shipment to the repair facility by the at least one automated tester, to
`the repair facility,
`repair of these set-top boxes at the repair facility,
`and return of repaired set-top boxes to the testing facility,
`[f] whereby said at least one automated tester is located at the testing
`facility maintained by the content service provider and the testing
`facility is situated separate and apart from locations at which the
`customers use the set-top boxes with their equipment such that
`categorization of each tested set-top box is performed separate and
`apart from the locations at which the customers use the set-top boxes,
`and
`[g] whereby each set-top box categorized as being in acceptable
`working order being redeployable, [h] each set-top box categorized as
`having a problem that can be resolved at the testing facility is
`corrected at the site of said at least one automated tester, [i] each set-
`top box categorized as having a problem requiring subsequent
`shipment to a repair facility is shipped to the repair facility.
`Ex. 1001, 15:54–16:42.
`D. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable based
`on the following grounds. Pet. 19.
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`Claims Challenged
`1–3, 5–11, 13–17,
`19–21, 23, 24
`
`35 U.S.C. §
`103(a)
`
`Reference(s)
`Buckley,1 Debenham2
`
`4, 12, 18, 22, 25
`
`103(a)
`
`Buckley, Debenham, Chouinard3
`
`
`Petitioner supports its challenges with citations to the references, the
`
`prosecution history of the challenged patent (Ex. 1002), and the declaration
`testimony of Samuel H. Russ, Ph.D. (Ex. 1003).
`II. DISCUSSION
`A. Level of Skill in the Art
`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)
`(internal quotation and citation omitted).
`Relying on the testimony of its declarant, Dr. Russ, Petitioner asserts
`that a person of ordinary skill in the art at the time of the effective filing date
`of the ’732 patent, would have had either: “(1) a bachelor’s degree in
`electrical engineering or an equivalent degree or coursework, or (2) at least
`
`
`1 UK 2 433 666 A, published June 27, 2007. Ex. 1004.
`2 US 5,764,650, issued June 9, 1998. Ex. 1005.
`3 “Integration of reverse logistics activities within a supply chain
`information system,” Computers in Industry 56, 2005, pp. 105–124 (2005).
`Ex. 1006.
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`two years of experience researching or developing software and hardware
`for automated test systems and/or methods of their manufacture.” Pet. 16
`(citing Ex. 1003 ¶ 59). Currently, Patent Owner has not expressed a position
`on the level of skill in the art.
`On this record and for purposes of this Decision, we adopt the
`assessment of the level of skill in the art offered by Petitioner and supported
`by Dr. Russ’s testimony. Pet. 16; Ex. 1003 ¶ 59.
`B. Claim Construction
`1. Applicable Law
`In this proceeding, in which the Petition was filed on September 30,
`2019 (see Paper 3, 1), we construe the claims “using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). Under the
`principles set forth by our reviewing court, the “words of a claim ‘are
`generally given their ordinary and customary meaning,’” as would be
`understood by a person of ordinary skill in the art in question at the time of
`the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
`2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
`1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
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`Claim limitations that include the terms “means” or “means for” are
`presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online,
`LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). This
`presumption may, however, be overcome if the claim element recites no
`function corresponding to the means, and even if the claim element specifies
`a function, if it also recites sufficient structure or material for performing
`that function. Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302
`(Fed. Cir. 1999). In determining whether a claim term recites sufficient
`structure, the standard is whether “the words of the claim are understood by
`persons of ordinary skill in the art to have a sufficiently definite meaning as
`the name for structure.” See Williamson, 792 F.3d at 1349 (quoting
`Greenberg v. Ethicon Endo–Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
`1996) (holding that “detent mechanism” was not a means-plus-function
`limitation)).
`Claims subject to 35 U.S.C. § 112, paragraph 6 (“§ 112 ¶ 6”), are
`construed in a “two-step process,” whereby we “first identify the claimed
`function,” and then “determine what structure, if any, disclosed in the
`specification corresponds to the claimed function.” Williamson, 792 F.3d at
`1351. “Application of § 112, ¶ 6 requires identification of the structure in
`the specification which performs the recited function,” but does not permit
`“incorporation of structure from the written description beyond that
`necessary to perform the claimed function.” Micro Chem., Inc., v. Great
`Plains Chem. Co., 194 F.3d 1250, 1257–58 (Fed. Cir. 1999). Moreover, the
`rules governing this inter partes review require that Petitioner “identify the
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`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).
`Only those terms in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA Trial
`proceeding).
`2. Analysis
`Petitioner asserts that claim 11, and its dependent claims, recite
`several means-plus-function limitations, including “testing means,”
`“processor means,” “billing means,” and “data storage means.” Pet. 16.
`Petitioner argues that there is “insufficient linkage between these terms and
`the [S]pecification to allow a skilled artisan to identify any structure
`corresponding to the function.” Id. Nevertheless, Petitioner proposes
`constructions for each of these terms. Id. at 17–19. Patent Owner does not
`propose a specific construction for any claim term of the ’732 patent. See
`generally Prelim. Resp. We consider each of the terms identified by
`Petitioner below.
`
`a. “testing means”
`The term “testing means” appears in several limitations of claim 11.
`Limitation 11[a] recites “a testing means for testing set-top boxes.” See Pet.
`43. Limitation 11[b] recites “said testing means being arranged to subject
`each set-top box . . . to a series of automated tests to determine whether each
`set-top box is functioning properly or requires repair.” Id. at 44. Limitation
`
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`11
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`11[c] recites “said testing means being arranged to categorize each tested
`set-top box into one of a plurality of different categories, the categories
`including one in acceptable working order, one having a problem that can be
`resolved at the testing facility and one having a problem that requires
`subsequent shipment to a repair facility.” Id. at 45. Limitation 11[f] recites
`“whereby said testing means is located at the testing facility maintained by
`the content service provider.” Id. at 47.
`We note that limitations 11[a], 11[b], and 11[c] each recite “means
`for” or “means arranged to” perform one or more specific functions. These
`limitations are, therefore, presumed to invoke § 112 ¶ 6. Williamson, 792
`F.3d at 1348. In addition, because each limitation recites a function and
`does not recite sufficient structure to perform entirely the claimed function,
`we conclude based on this record and for purposes of this Decision, that
`these limitations are to be interpreted under § 112 ¶ 6. See Cross Med.
`Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1303 (Fed.
`Cir. 2005) (finding the terms “anchoring means” and “securing means”
`subject to § 112 ¶ 6). We also determine, for purposes of this Decision, that
`although limitation 11[f] recites the term “testing means,” limitation 11[f] is
`not subject to § 112 ¶ 6 because it does not recite a specific function of the
`testing means, but rather recites its location—“at the testing facility
`maintained by the content service provider.”
`Petitioner argues that the claimed “testing means” may relate to the
`RLS tester disclosed in the Specification. Pet. 17. In view of the description
`of the RLS tester in the Specification, Petitioner contends the term “testing
`means” should be construed as “an automated tester comprising at least one
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`video output device, a data acquisition/switch, a digitizer, signal routing
`switches, IR blaster modules, interface boxes, and demodulators.” Id. (citing
`Ex. 1001, 15:34–45; Ex. 1003 ¶ 65). Patent Owner does not address
`expressly any of the “testing means” limitations. See generally Prelim.
`Resp.
`
`It is unclear whether Petitioner’s proffered construction for “testing
`means” is to apply to limitations 11[a], 11[b], and 11[c]. See id. at 43–45.
`Where there are multiple claimed functions, as we have here with respect to
`limitations 11[a], 11[b], and 11[c], the Specification must disclose adequate
`corresponding structure to perform all of the claimed functions.
`See Williamson, 792 F.3d at 1351–52.
`Limitation 11[a] recites “testing means for testing set-top boxes after
`having been returned by a customer to the content service provider and
`moved to the common testing facility.” Pet. 43; Ex. 1001, 17:40–42. This
`limitation recites the function of “testing set-top boxes.” In that regard, the
`’732 patent Specification explains, for example, that the RLS tester referred
`to by Petitioner is “for testing and diagnosing” set-top boxes. See Pet. 17;
`Ex. 1001, 5:28–32. On this record and for purposes of this Decision, we
`determine that the structure disclosed in the Specification corresponding to
`the claimed function is, as Petitioner contends, “an automated tester
`comprising at least one video output device, a data acquisition/switch, a
`digitizer, signal routing switches, IR blaster modules, interface boxes, and
`demodulators.”
`Limitation 11[b] recites “said testing means being arranged to subject
`each set-top box, when coupled to said testing means and not to the
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`customer’s equipment, to a series of automated tests to determine whether
`each set-top box is functioning properly or requires repair.” Pet. 44;
`Ex. 1001, 17:43–47. We determine that the claim phrase “testing means
`being arranged to” has the same meaning as “testing means for.” Thus, we
`determine that this limitation recites the function of “subject[ing] each set-
`top box, when coupled to said testing means and not to the customer’s
`equipment, to a series of automated tests to determine whether each set-top
`box is functioning properly or requires repair.” The ’732 patent
`Specification describes that the RLS tester performs the process shown in
`Figure 2 to determine if the set-top box passes or fails the test, and if it fails,
`“it is prepared for shipment to a central facility for repair.” Ex. 1001, 10:21–
`36. On this record and for purposes of this Decision, we determine that the
`structure disclosed in the Specification corresponding to the claimed
`function of limitation 11[b] is, as Petitioner contends, “an automated tester
`comprising at least one video output device, a data acquisition/switch, a
`digitizer, signal routing switches, IR blaster modules, interface boxes, and
`demodulators.”
`Limitation 11[c] recites:
`said testing means being arranged to categorize each tested set-
`top box into one of a plurality of different categories, the
`categories including one in acceptable working order, one having
`a problem that can be resolved at the testing facility and one
`having a problem that requires subsequent shipment to a repair
`facility.
`Pet. 45; Ex. 1001, 17:47–53. As discussed above, we determine that claim
`phrase “testing means being arranged to” has the same meaning as “testing
`means for.” Therefore, we determine that limitation 11[c] recites the
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`function of “categoriz[ing] each tested set-top box into one of a plurality of
`different categories, the categories including one in acceptable working
`order, one having a problem that can be resolved at the testing facility and
`one having a problem that requires subsequent shipment to a repair facility.”
`The ’732 patent Specification describes that for overall monitoring of the
`test system, including one or more RLS testers, main server 16 is coupled
`through the network to all the testers. Ex. 1001, 6:6–8. The Specification
`states that “since the RLS tester 12 provides an immediate categorization of
`the result of the testing, i.e., an identification of the problem with the set-top
`box 14,” it is possible to fix certain problems at the warehouse rather than
`shipping the boxes to the repair facility. Id. at 7:49–53. The Specification
`also states that “[a]fter the determination is made . . . as to whether the set-
`top box 14 passed or failed the test, the main server 16 is notified by the
`RLS tester 12” that the box has passed or failed the test, preferably with the
`particular results of the test and data about the box. Id. at 10:37–41. Thus,
`on this record and for purposes of this Decision, we determine that the RLS
`tester performs the “categorizing” function of limitation 11[c]; and, we also
`determine that the corresponding structure disclosed in the Specification for
`performing this function is, as Petitioner contends, “an automated tester
`comprising at least one video output device, a data acquisition/switch, a
`digitizer, signal routing switches, IR blaster modules, interface boxes, and
`demodulators.”
`
`b. “processor means”
`Petitioner argues that the ’732 patent Specification has several
`references to a processor, “but no clear disclosure of a structure for a
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`‘processor means.’” Pet. 18. Petitioner notes that the Specification states
`that “[t]he RLS tester 12 includes a processor and associated electronic or
`computer hardware and software to enable the processor to communicate
`with the set-top boxes 14 and run one or more computer programs designed
`to perform diagnostic testing of the set-top boxes 14.” Id. (citing Ex. 1001,
`4:48–52). Petitioner contends that in view of this disclosure, the claimed
`“processor means” should be construed as “computer hardware and software
`coupled to the testing means and configured to execute computer programs
`designed to perform diagnostic testing of the set-top boxes.” Id. (citing Ex.
`1003 ¶ 66). Patent Owner does not specifically address construction of the
`claimed “processor means.” See generally Prelim. Resp.
`The term “processor means” is recited in limitations 11[d] and 11[e].
`See Pet. 45–46. Limitation 11[d] recites, “processor means coupled to said
`testing means for receiving test results about set-top boxes from said testing
`means and coordinating subsequent repair of set-top boxes determined to
`require repair.” Ex. 1001, 17:54–57. Limitation 11[e] recites:
`said processor means being arranged to:
`coordinate shipment of the set-top boxes, after having been returned
`by customers to the content service provider, moved to the common
`testing facility and categorized as having a problem that requires
`shipment to the repair facility by said testing means, by the content
`service provider from the testing facility, at which the set-top boxes
`have been categorized as having a problem that requires shipment to
`the repair facility by said testing means, to the repair facility,
`repair of these set-top boxes at the repair facility,
`and return of repaired set-top boxes to the testing facility,
`Id. at 17:57–18:2.
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`
`Limitation 11[d] is written in means-plus-function format because it
`recites “means . . . for” and the functions of “receiving test results about set-
`top boxes . . . and coordinating subsequent repair.” Similarly, limitation
`11[e] is written in means-plus-function format because it recites “processor
`means being arranged to” and the functions of “coordinat[ing] shipment of
`the set-top boxes . . . to the repair facility, repair of these set-top boxes . . .
`and return of repaired set-top boxes to the testing facility.” Thus, these
`limitations presumptively invoke § 112 ¶ 6. Williamson, 792 F.3d at 1348.
`
`However, each of these limitations also recites a “processor.” As
`Petitioner argues, the Specification states the RLS tester includes “a
`processor and associated electronic or computer hardware and software” to
`enable the processor to communicate with the set-top boxes and run one or
`more computer programs to perform diagnostic testing. Pet. 18 (citing Ex.
`1001, 4:48–52). We determine on this record and for purposes of this
`Decision, that the term “processor” would have been understood by a person
`of ordinary skill in the art in view of the Specification to have a sufficiently
`definite meaning as the name for structure—computer hardware and
`software. We also determine for purposes of this Decision, that limitations
`11[d] and 11[e] are not subject to § 112 ¶ 6 because each limitation recites
`sufficiently definite structure, i.e., a processor, for performing the recited
`functions of each limitation. See Cole v. Kimberly-Clark Corp., 102 F.3d
`524, 531 (Fed. Cir. 1996) (finding that § 112 ¶ 6 did not apply to claimed
`“perforation means” because it describes the structure support the tearing
`function (i.e., perforations)). We further determine for purposes of this
`
`
`
`17
`
`
`
`IPR2019-01670
`Patent 8,209,732 B2
`
`Decision, that the “processor,” as recited in limitations 11[d] and 11[e],
`means computer hardware and software.
`c. “billing means”
`Claim 12 depends from claim 11 and further recites “billing means
`coupled to said processor means for coordinating invoicing for testing
`performed by said testing means and repair of set-top boxes.” Ex. 1001,
`18:20–23. Thus, claim 12 recites the term “means,” and the function of
`“coordinating invoicing for testing . . . and repair of set-top boxes.”
`The ’732 patent Specification states that “billing system 18 is
`preferably coupled to the main server 16 and manages fees for using the
`RLS testers 12. This may involve invoicing the content service providers for
`testing the set-top boxes 14 and repairing malfunctions set-top boxes 14.”
`Ex. 1001, 6:47–51. Petitioner argues that the ’732 patent Specification
`states that the billing system includes “a database for retaining information
`about set-top boxes 14 that are being sent from the warehouses to a repair
`facility.” Pet. 18 (citing Ex. 1001, 64:53–55). Petitioner also argues that, in
`view of this disclosure, the claimed “billing means” should be construed as
`“a database.” Id. (citing Ex. 1003 ¶ 67). Patent Owner does not expressly
`address claim 12 in its Preliminary Response. See generally Prelim. Resp.
`On this record and for purposes of this Decision, we determine that
`claim 12 presumptively invokes § 112 ¶ 6 because it recites “means . . . for,”
`and the function of “coordinating invoicing” for testing and repair of set-top
`boxes. Williamson, 792 F.3d at 1348. Petitioner was required, therefore,
`
`4 Petitioner mistakenly cites column 5, rather than column 6 of Exhibit
`1001. See Pet. 18.
`
`
`
`18
`
`
`
`IPR2019-01670
`Patent 8,209,732 B2
`
`pursuant to 37 C.F.R. § 42.104(b)(3), to “identify the specific portions of the
`specification that describe the structure [or] material . . . corresponding to
`each claimed function.” In that regard, Petitioner identifies “a database.”
`Pet. 18 (citing Ex. 1001, 6:53–55).
`It is well established that “[t]he corresponding structure for a § 112
`¶ 6 claim for a computer-implemented function is the algorithm disclosed in
`the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech.,
`521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc.,
`417 F.3d 1241, 1249 (Fed. Cir. 2005)). Petitioner’s proposed structure is a
`general computer component, i.e., a database, but does not provide sufficient
`algorithmic detail about the means to accomplish the recited function of
`“coordinating invoicing.” See Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d
`1323, 1340–41 (Fed. Cir. 2008); see also Blackboard, Inc. v. Desire2Learn,
`574 F.3d 1371, 1382 (Fed. Cir. 2009). Petitioner does not direct us to any
`description, whether in prose, flow chart, or any other manner, that provides
`sufficient corresponding structure to perform the recited function of
`“coordinating invoicing for testing performed by said testing means and
`repair of set-top boxes.” In particular, Petitioner does not show how “a
`database for retaining information about set-top boxes 14 that are being sent
`from the warehouses to a repair facility,” and that is coupled to main server
`16, performs the recited function of “coordinating invoicing” without some
`type of algorithmic structure, e.g., special programming. See EON Corp. IP
`Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015)
`(“A microprocessor or general purpose computer lends sufficient structure
`
`
`
`19
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`
`
`IPR2019-01670
`Patent 8,209,732 B2
`
`only to basic functions of a microprocessor. All other computer
`implemented functions require disclosure of an algorithm.”).
`In view of the foregoing, on this record and for purposes of this
`Decision, we determine Petitioner has not identified, in the ’732 patent
`Specification, an algorithm for performing the computer-implemented
`function of “coordinating invoicing for testing performed by said testing
`means and repair of set-top boxes.” Accordingly, Petitioner has not
`identified sufficient corresponding structure for performing the function of
`the means-plus-function limitation of claim 12.
`d. “data storage means”
`Claim 13 depends from claim 11 and further recites “data storage
`means for storing test results from said testing means, said data storage
`means being accessible to enable generation of customized reports abou
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