Sony Corporation v. Iancu , 924 F.3d 1235 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
SONY CORPORATION,
Appellant
v.
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2018-1172
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00834.
______________________
Decided: May 22, 2019
______________________
SCOTT ANTHONY MCKEOWN, Ropes & Gray LLP, Wash-
ington, DC, argued for appellant. Also represented by
DOUGLAS HALLWARD-DRIEMEIER; HENRY HUANG, East Palo
Alto, CA.
ROBERT MCBRIDE, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by THOMAS W. KRAUSE.
______________________
2 SONY CORP. v. IANCU
Before PROST, Chief Judge, NEWMAN and DYK, Circuit
Judges.
Opinion for the court filed by Circuit Judge DYK.
Dissenting opinion filed by Circuit Judge NEWMAN.
DYK, Circuit Judge.
Sony Corp. is the owner of U.S. Patent No. 6,097,676
(“the ’676 patent”). It appeals the Patent Trial and Appeal
Board’s (“Board’s”) final decision in IPR No. 2016-00834.
The Board found claims 5 and 8 of the ’676 patent un-
patentable as obvious. We vacate and remand.
BACKGROUND
The ’676 patent is directed to “an information recording
medium” (e.g., a compact disk, video disk, or magneto-opti-
cal disk) that can store audio data having multiple chan-
nels and “a reproducing device” that can select which
channel to play based on a default code or value stored in
nonvolatile memory. ’676 patent, Abstract; id. col. 1, ll. 11–
15. The specification states that the reproducing device is
provided with “storing means” for storing the audio infor-
mation (e.g., audio data recorded in different languages),
“reading means” for reading codes associated with the au-
dio information (e.g., 0, 1, 2, and 3 for English, French, Ger-
man, and Japanese, respectively), and “reproducing
means” for reproducing the audio information based on the
default code or value. Id. col. 3, ll. 4–11.
The specification gives the example of a device manu-
factured to record and store audio data (e.g., of a movie) in
multiple different languages for various countries. Id. col.
3, ll. 36–42; id. col. 10, l. 60–col. 11, l. 9. A single device
can be manufactured for use in any of those countries “pro-
vided that the default [value (e.g., 0, 1, 2, or 3)] is
. . . changed and set for every destination country.” Id. col.
3, ll. 36–42.
SONY CORP. v. IANCU 3
Claim 5 of the ’676 patent recites:
5. An information reproducing device for reproduc-
ing an information recording medium in which au-
dio data of plural channels are multiplexedly
recorded, the information reproducing device com-
prising:
storing means for storing a default value
for designating one of the plural channels
to be reproduced; and
reproducing means for reproducing the au-
dio 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 dif-
ferent languages is stored in the storing
means.
Id. col. 12, ll. 28–43. Claim 8 recites the same limitations
as claim 5 and additionally recites that “codes representing
the kinds of the audio data” are multiplexedly recorded in
the information recording medium, that the information
reproducing device includes “reading means” for reading
the codes, and that the reproducing means is for reproduc-
ing the audio data “according to the codes read by the read-
ing means.” Id. col. 13, ll. 1–21.
The Board instituted inter partes review as to claims 5
and 8 of the ’676 patent. The primary focus during inter
partes review was whether the “reproducing means” limi-
tation was computer-implemented and required an algo-
rithm.
4 SONY CORP. v. IANCU
On September 28, 2017, the Board issued a final deci-
sion finding the claims unpatentable as obvious over U.S.
Patent No. 5,130,816 to Yoshio (“Yoshio”). The Board con-
strued the “reproducing means” limitation as a means-
plus-function limitation. The Board explained that the re-
cited function is “reproducing the audio data of the channel
designated by the default value stored in the storing
means.” Arris Int’l PLC v. Sony Corp., IPR2016-00834,
2017 WL 4349410, at *4 (P.T.A.B. Sept. 28, 2017). The
Board determined that the structure that performs these
functions is “a controller and a synthesizer, or the equiva-
lent.” Id. at *12. The Board further concluded that the
limitation is not computer-implemented and does not re-
quire an algorithm because “synthesizer 11 and controller
13 both are shown and described in the ’676 patent as dis-
crete hardware elements.” Id. at *5, 9.
The Board found that Yoshio taught most of the limita-
tions of claims 5 and 8 and that the claims would have been
obvious over Yoshio. Yoshio is directed to “a method and
apparatus of recording and reproducing information, in
which a plurality of audio signals corresponding to speech
in a plurality of languages can be recorded on a recording
medium” (e.g., a video disc or a digital audio disc) and in
which “an audio signal corresponding to the speech in a de-
sired language can be obtained from among the plurality of
audio signals recorded on the recording medium.” Yoshio,
col. 1, ll. 43–50. Yoshio taught that audio signals of five
channels (e.g., CH1, CH2, CH3, CH4, and CH5 for sound
effects, Japanese, English, Chinese, and Korean, respec-
tively) can be recorded. Yoshio further disclosed a com-
puter-implemented “system controller” that detects
whether a channel has been designated and supplies data
indicating the designated channel, or data indicating a pre-
determined channel if no channel was designated, to an
ADPCM decoder and graphics decoder to select the
SONY CORP. v. IANCU 5
channel. Based on the channel designated, the audio track
in the corresponding language is played.
Sony appeals. Petitioners have elected not to partici-
pate in the appeal, and the Director of the U.S. Patent and
Trademark Office intervened to defend the Board’s deci-
sion. This court has jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A). 1
1 The dissent urges that there is no longer “a live
case or controversy sufficient to satisfy Article III” because
the ’676 patent expired in August 2017, petitioners have
elected not to participate in the appeal, and the parties
have settled the district court infringement suit involving
the ’676 patent. Dissent Op. at 1.
The parties to this appeal remain adverse, and no party
has suggested the lack of an Article III case or controversy.
The Director argues that the Board’s decision finding
claims 5 and 8 of the ’676 patent unpatentable should be
affirmed (which would result in “the Director . . . issu[ing]
and publish[ing] a certificate canceling [the] claim[s],” 35
U.S.C. § 318(b)). Sony argues that the Board’s decision
should be reversed and the claims should be found patent-
able. This presents an Article III controversy.
Even if the existence of a potential infringement suit
were relevant, there has been no showing that such a con-
troversy does not exist, as would be required for mootness.
See Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83,
98 (1993). It is well-established that our decision (and the
Board’s decision on remand) would have a consequence on
any infringement that occurred during the life of the ’676
patent. See Genetics Inst. v. Novartis Vaccines, 655 F.3d
1291, 1299 (Fed. Cir. 2011) (“[A]n expired patent may form
the basis of an action for past damages subject to the six-
year limitation under 35 U.S.C. § 286.”); see also Keranos,
LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025, 1033
6 SONY CORP. v. IANCU
DISCUSSION
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. Redline Detec-
tion, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed.
Cir. 2015). We review the ultimate question of the proper
construction of a patent de novo, with any underlying fact
findings reviewed for substantial evidence. In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015).
The ’676 patent expired in August 2017. During inter
partes review proceedings, claims of an expired patent are
construed using the framework set forth in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Wasica
Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279
(Fed. Cir. 2017).
Sony’s primary argument on appeal is that the Board
erred in construing the “reproducing means” limitation.
Claims 5 and 8 both recite, in pertinent part, “reproducing
means for reproducing the audio data of the channel desig-
nated by the default value stored in the storing means.”
’676 patent, col. 12, ll. 28–43 (emphasis added); id. col. 13,
ll. 11–21. There is no dispute that the “reproducing means”
limitation is a means-plus-function limitation, invoking 35
U.S.C. § 112 ¶ 6. 2
(Fed. Cir. 2015) (Although “the patentee has fewer rights
to transfer when the patent has expired,” the owner of an
expired patent can license the rights or transfer title to an
expired patent.); Mars, Inc. v. Coin Acceptors, Inc., 527
F.3d 1359, 1372 (Fed. Cir. 2008) (“Title to . . . an expired
patent . . . includes more than merely the right to recover
damages for past infringement.”).
2 Because the application that led to the ’676 patent
was filed before March 16, 2013, pre-AIA 35 U.S.C. § 112
applies here.
SONY CORP. v. IANCU 7
The first step in construing a means-plus-function claim
limitation is to determine the function of the limitation.
Golight, Inc. v. Wal–Mart Stores, Inc., 355 F.3d 1327, 1333
(Fed. Cir. 2004). Here, Sony and the Director agree that
the function performed by the reproducing means is “repro-
ducing the audio data of the channel designated by the de-
fault value stored in the storing means.”
After identifying the function of the means-plus-func-
tion claim limitation, the next step is to determine the cor-
responding structure disclosed in the specification. Id. at
1334. “Under this second step, structure disclosed in the
specification is corresponding structure only if the specifi-
cation or prosecution history clearly links or associates that
structure to the function recited in the claim.” Id. (quoting
Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
344 F.3d 1205, 1210 (Fed. Cir. 2003)).
“In cases involving a computer-implemented invention
in which the inventor has invoked means-plus-function
claiming, this court has consistently required that the
structure disclosed in the specification be more than simply
a general purpose computer or microprocessor.” Aristocrat
Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008). For means-plus-function claims “in
which the disclosed structure is a computer, or micropro-
cessor, programmed to carry out an algorithm,” we have
held that “the disclosed structure is not the general pur-
pose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm.” WMS
Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed.
Cir. 1999).
Before the Board, Sony’s primary argument was that
the “reproducing means” limitation is implemented on a
computer and thus, under our precedent, requires an algo-
rithm to carry out the claimed function. The Board disa-
greed and held that the limitation is implemented in
8 SONY CORP. v. IANCU
hardware and accordingly does not require an algorithm.
Specifically, the Board concluded that the corresponding
structure of the reproducing means is “a controller and a
synthesizer, or the equivalent.” Arris, 2017 WL 4349410,
at *12. The Board further explained that “[a]lthough the
specification of the ’676 patent includes steps that could be
termed an algorithm and that could be implemented on a
computer, we agree with Petitioner that does not mean
that the controller is ‘computer-implemented’ or require
that the construction must include the algorithm.” Id. at
*10.
Although the parties appear to agree on appeal that the
specification contemplates a hardware-implementation of
the reproducing means, we think Sony’s original position
was correct. We are not bound by the parties’ arguments
as to claim construction. See Exxon Chem. Patents, Inc. v.
Lubrizol Corp., 64 F.3d 1553, 1555–58 (Fed. Cir. 1995)
(“[T]he [court] has an independent obligation to determine
the meaning of the claims, notwithstanding the views as-
serted by the adversary parties.”).
On its face, the ’676 patent refers to a computer-imple-
mentation of the reproducing means. The specification
states that the “reproducing means comprises a synthe-
sizer 11 and a controller 13.” ’676 patent, col. 3, ll. 18–19.
The specification further explains that “[i]n reproducing
such a recording medium by using the reproducing device
of the present invention, the processing as shown in FIG.
16 is executed.” Id. col. 11, ll. 10–12 (emphasis added). Fig-
ure 16, in turn, discloses an algorithm in the form of a
flowchart.
If the controller of the reproducing means were imple-
mented in hardware, we would expect the patent to de-
scribe or refer to the circuitry of the controller that would
be required for a hardware controller to perform the
claimed function. The ’676 patent does not do so.
SONY CORP. v. IANCU 9
Therefore, despite testimony of petitioners’ expert that a
person of ordinary skill in the art would understand that
the controller of the reproducing means “need not neces-
sarily be computer-implemented” and “is more likely im-
plemented in hardware,” J.A. 1261–64, we think that the
reproducing means is necessarily construed as computer-
implemented based on the specification.
Since we conclude that the reproducing means limita-
tion is computer-implemented, the corresponding structure
must include an algorithm. See WMS Gaming, 184 F.3d at
1349. The specification describes the flowchart algorithm
of Figure 16 as follows:
In reproducing such a recording medium by using
the reproducing device of the present invention, the
processing as shown in FIG. 16 is executed. First,
reproduction of a desired track is commanded
through the digitizer 17 (step S31). For instance,
when reproduction of the track #3 is commanded,
the controller 13 controls the drive 2 to start repro-
duction of the track 3. The start of reproduction is
awaited (step S32). If the reproduction is started,
the controller 13 reads the track header from the
output from the decoder 4 and reads the number of
multiplex sound and language data (step S33).
Further, the controller 13 reads default language
data from the nonvolatile memory 16 (step S34),
and determines whether or not the multiplex audio
data contains audio data according with the default
language data (step S35). If the audio data accords
with the default language data, the controller 13
controls the synthesizer 11 to select the audio data
according with the default language data (step
S36). If the multiplex audio data does not contain
the audio data according with the default language
data, the controller 13 controls the synthesizer 11
10 SONY CORP. v. IANCU
to select audio data located at the first position in
the multiplex audio data (step S37).
’676 patent, col. 11, ll. 10–32.
The ’676 patent specification clearly links the function
of the “reproducing means” to the algorithm flowchart of
Figure 16. The specification explains that “[i]n reproduc-
ing such a recording medium by using the reproducing de-
vice of the present invention, the processing as shown in
FIG. 16 is executed.” Id. col. 11, ll. 10–12. “When a patent
. . . describes the features of the ‘present invention’ as a
whole,” as it does here, “this description limits the scope of
the invention.” Verizon Servs. Corp. v. Vonage Holdings
Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). Indeed, peti-
tioners’ expert relied on the algorithm disclosed in the ’676
patent in describing how the controller performs the func-
tion of the reproducing means.
We conclude that the “reproducing means” limitation of
claims 5 and 8 of the ’676 patent is more appropriately con-
strued as computer-implemented, and that the correspond-
ing structure is a synthesizer and controller that performs
the algorithm disclosed in the specification. The Board did
not reach the question of whether Yoshio, which is com-
puter-implemented, disclosed the algorithm of the ’676 pa-
tent or the equivalent. Accordingly, we vacate the Board’s
decision and remand for further consideration of whether
Yoshio discloses a synthesizer and controller that performs
the algorithm disclosed in the specification, or the equiva-
lent, and whether the challenged claims would have been
obvious over Yoshio.
VACATED AND REMANDED
COSTS
No costs.
United States Court of Appeals
for the Federal Circuit
______________________
SONY CORPORATION,
Appellant
v.
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2018-1172
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00834.
______________________
NEWMAN, Circuit Judge, dissenting.
The threshold question on appellate jurisdiction is
whether there is a live case or controversy sufficient to sat-
isfy Article III. The only patent on appeal, U.S. Patent
No. 6,097,676, expired in August 2017; the IPR petitioner,
ARRIS, declines to defend its PTAB victory; and the parties
have settled the infringement suit in district court. There
is no interest, neither private interest nor public interest,
in the fate of this patent. There appears to be no conse-
quence of either our appellate decision today or the
2 SONY CORPORATION v. IANCU
potential PTAB decision on the remand now ordered by the
court. 1 This appeal fails the requirements of Article III.
“No principle is more fundamental to the judiciary’s
proper role in our system of government than the constitu-
tional limitation of federal-court jurisdiction to actual cases
or controversies.” Raines v. Byrd, 521 U.S. 811, 818 (1997)
(quoting Simon v. E. Ky. Welfare Rights Org., 426 U.S. 26,
37 (1976)). Federal courts are limited to their constitu-
tional authority, and “[i]f a dispute is not a proper case or
controversy, the courts have no business deciding it, or ex-
pounding the law in the course of doing so.” DaimlerChrys-
ler Corp. v. Cuno, 547 U.S. 332, 341 (2006).
Every federal court has the obligation to assure its own
jurisdiction:
[T]he rule, springing from the nature and limits of
the judicial power of the United States, is inflexible
and without exception, which requires this court, of
its own motion, to deny its own jurisdiction, and, in
the exercise of its appellate power, that of all other
courts of the United States, in all cases where such
jurisdiction does not affirmatively appear in the
record on which, in the exercise of that power, it is
called to act. On every writ of error or appeal, the
first and fundamental question is that of jurisdic-
tion, first, of this court, and then of the court from
which the record comes. This question the court is
bound to ask and answer for itself, even when not
1 The PTO Director, intervening “to defend the
Board’s decision,” does not explain the agency’s interest in
further judicial and administrative proceedings on this pa-
tent that expired 20 months ago and is now devoid of con-
troversy. The panel majority’s description of the Director
as a party that “remain[s] adverse,” is not explained.
SONY CORPORATION v. IANCU 3
otherwise suggested, and without respect to the re-
lation of the parties to it.
Bender v. Williamsport Area Sch. Dist., 475 U.S. 534, 546–
47 (1986) (quoting Mansfield, C. & L.M. Ry. Co. v. Swan,
382 (1884)).
The rule that “[t]o qualify as a case fit for federal-court
adjudication, ‘an actual controversy must be extant at all
stages of review’” includes review by a federal court of
agency action. See Arizonans for Official English v. Ari-
zona, 520 U.S. 43, 67 (1997) (quoting Preiser v. Newkirk,
422 U.S. 395, 401 (1975)); see also Lewis v. Cont’l Bank
Corp., 494 U.S. 472, 477 (1990) (“This case-or-controversy
requirement subsists through all stages of federal judicial
proceedings, trial and appellate. To sustain our jurisdic-
tion in the present case, it is not enough that a dispute was
very much alive when suit was filed . . . .”). Such a rule
follows ineluctably from the proposition that the court “is
not empowered to decide moot questions or abstract propo-
sitions.” North Carolina v. Rice, 404 U.S. 244, 246 (1971)
(quoting United States v. Alaska S.S. Co., 253 U.S. 113, 116
(1920)).
A necessary question is whether there remain any con-
sequences of our appellate decision. As the party seeking
judicial review, “[i]t is the responsibility of [Sony] clearly to
allege facts demonstrating that [it] is a proper party to in-
voke judicial resolution of the dispute and the exercise of
the court’s remedial powers.” Renne v. Geary, 501 U.S. 312,
316 (1991) (internal quotation marks and citation omitted).
Here, appellant Sony must establish its continuing interest
“‘when it seeks review of an agency’s final action in a fed-
eral court,’ by creating a necessary record in this court, if
the record before the Board does not” so establish. JTEKT
Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1220 (Fed. Cir.
2018) (quoting Phigenix, Inc. v. Immunogen, Inc., 845 F.3d
1168, 1172 (Fed. Cir. 2017)).
4 SONY CORPORATION v. IANCU
Although a patentee has an indisputable interest in the
validity of its patent, here the patent has expired and the
district court litigation was terminated. Appellant’s Br. 2
n.1. In the “Statement of Related Cases” Sony “inform[ed]
the Court that U.S. Patent No. 6,097,676 was asserted in
litigation captioned as Sony Corp. v. ARRIS Global Ltd.,
No. 1:15-cv-00288 (D. Del.).” However, that litigation was
terminated and dismissed with prejudice, at the joint re-
quest of the parties, on November 28, 2017. Sony Corp. v.
ARRIS Global Ltd., No. 1:15-cv-00288 (D. Del.), ECF
No. 286 (“Stipulation and Order for Dismissal”). Sony also
mentions the concurrent appeal on a different patent, Sony
Corp. v. Iancu, No. 18–1173, but no connection is asserted
between these appeals.
Sony states that it “is unaware of any other case pend-
ing” upon which our decision will have an effect, and recites
no other consequence of this appeal, with respect to ARRIS
or any other entity. Appellant’s Br. viii. The Court’s prec-
edent leaves no room for the speculative circumstances pos-
ited by my colleagues. “Article III of the Constitution
requires that there be a live case or controversy at the time
that a federal court decides the case.” Burke v. Barnes, 479
U.S. 361, 363 (1987). No such circumstance is mentioned,
nor even hinted, by any party or the intervenor.
The record contains not even a remote suggestion of
possible future litigation or other potential actions by uni-
dentified acquirers of this expired patent. The panel ma-
jority searches for a possible case-or-controversy, proposing
that there may be speculative or unspecified circum-
stances. Maj. Op. 5 n.1. However, “[w]e presume that fed-
eral courts lack jurisdiction unless the contrary appears
affirmatively from the record.” Renne, 501 U.S. at 316 (in-
ternal quotation marks omitted) (quoting Bender, 475 U.S.
at 546)). If such possibility indeed exists, it was Sony’s ob-
ligation to say so, for the “burden of establishing” that the
requirements of Article III are met is placed on “the party
seeking judicial review.” JTEKT, 898 F.3d at 1220; see also
SONY CORPORATION v. IANCU 5
Phigenix, 845 F.3d at 1171 (placing the burden on the ap-
pellant).
No possibility of present or future case-or-controversy
has been suggested—not by Sony, not by the vanished
party ARRIS, not by the intervenor Director. Whether or
not the PTAB erred in its decision, now that all known past,
present, and future controversy has vanished, further pro-
ceedings are devoid of juridical content. 2
On the record before us, both the court’s decision on
this appeal and our remand for further PTAB proceedings
are devoid of substance and consequence—they thus ap-
pear to be advisory. And “[a]s is well known the federal
courts established pursuant to Article III of the Constitu-
tion do not render advisory opinions.” United Pub. Workers
of Am. (C.I.O.) v. Mitchell, 330 U.S. 75, 89 (1947).
This appeal should be dismissed. From my colleagues’
departure from the principles of Article III and the judicial
role, I respectfully dissent.
2 Other cases have raised various aspects of imple-
mentation of the America Invents Act, including applica-
tion of “relaxed” jurisdictional standards, the effects of
estoppel, and vacatur of unappealable decisions. However,
such aspects are not here raised.