Federal Circuit sides with Sony in IPR appeal
The US Court of Appeals for the Federal Circuit yesterday sided with Sony in its appeal against the Patent Trial and Appeal Board’s (PTAB) final decision in an inter partes review (IPR) of a patent directed to the storage of audio data.
Sony’s US patent number 6,097,676 covers an information recording medium (such as compact disc) which stores audio data with multiple channels, and a recording device that selects which channel to play based on a default code or value stored in the memory.
For example, a film could constitute a single device manufactured to record and store audio data in multiple languages for various countries, the Federal Circuit noted.
The specification of the ‘676 patent states that the device is equipped with “reproducing means” for reproducing the audio information based on the default code or value.
In 2017, in an IPR, the PTAB held that claims of the ‘676 patent are obvious in light of US patent number 5,130,816.
The ‘816 patent is directed to “a method and apparatus of recording and reproducing information, in which a plurality of languages can be recorded on a recorded medium”, and the ‘676 patent would have been obvious in light of this, the PTAB said.
Sony appealed against the decision, even though the ‘676 patent expired in August 2017, and argued that the PTAB erred in its construction of the “reproducing means” limitation of the patent’s claims.
Sony claimed that the “reproducing means” limitation is implemented on a computer and requires an algorithm to carry out the claimed function. The PTAB had rather held that the limitation is implemented in hardware, and so does not require an algorithm.
Yesterday, the Federal Circuit ruled that “Sony’s original position was correct” and the reproducing means is “necessarily construed as computer-implemented based on the specification”.
The court said: “If the controller of the reproducing means were implemented in hardware, we would expect the patent to describe 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.”
As the PTAB had construed the “reproducing means” limitation differently, it had not considered the question of whether the ‘816 patent disclosed the algorithm covered in the ‘676 patent.
Therefore, the Federal Circuit vacated the board’s decision and remanded the matter for consideration of whether the ‘816 patent disclosed the algorithm of the ‘676 patent.
Dissenting, Circuit Judge Pauline Newman said that there is “no interest, neither private interest nor public interest, in the fate of this patent”. She noted that the ‘676 patent has expired and the original IPR petitioner, entertainment company Arris, declined to defend its victory at the Federal Circuit.
“There appears to be no consequence of either our appellate decision today or the potential PTAB decision on the remand now ordered by the court,” Newman said.
She concluded that the Federal Circuit’s decision and its remand for further PTAB proceedings are “devoid of substance and consequence”.
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