expired patent : CAFC Alert

There is a Standing to Defend Your Expired Patent Even If an Infringement Suit Has Been Settled

Sung-Hoon Kim | July 8, 2019

Sony Corp. v. Iancu

Summary:

The CAFC vacated the PTAB’s decision, in which the PTAB found that the limitation “reproducing means” is not computer-implemented and does not require an algorithm because this limitation should have been construed as computer-implemented and that the corresponding structure is a synthesizer and controller that performs the algorithm described in the specification.  In addition, the CAFC found that there is a standing to appeal to defend an expired patent because the CAFC’s decision would have a consequence on any infringement that took place during the life of the patent.

Details:

Sony is the owner of U.S. Patent No. 6,097,676 (“the ’676 patent”) and appeals the PTAB’s decision in IPR, in which the PTAB found claims 5 and 8 of the ’676 patent unpatentable as obvious.

The ’676 patent:

            The ’676 patent is directed to an information recording medium that can store audio data having multiple channels and a reproducing device that can select which channel to play based on a default code or value stored in a memory.  This reproducing device has (1) storing means for storing the audio information, (2) reading means for reading codes associated with the audio information, and (3) reproducing means for reproducing the audio information based on the default code or value.

            Claim 5 of the ’676 patent recites:

5.         An information reproducing device for reproducing an information recording medium in which audio data of plural channels are multiplexedly recorded, the information reproducing device comprising:

storing means for storing a default value for designating one of the plural channels to be reproduced; and

reproducing means for reproducing the audio data of the channel designated by the default value stored in the storing means; and

wherein a plurality of voice data, each voice data having similar contents translated into different languages are multiplexedly recorded as audio data of plural channels; and a default value for designating the voice data corresponding to one of the different languages is stored in the storing means.

            Claim 8 recites the same features as claim 5 with some additional features.

The PTAB:

            The PTAB instituted IPR as to claims 5 and 8 of the ’676 patent.  The issue during IPR was whether the “reproducing means” was computer-implemented and required an algorithm.

            On September, 2017, the PTAB issued a final decision, where the claims were found to be unpatentable as obvious over the Yoshio reference.  The PTAB construed the “reproducing means” has a means-plus-function limitation, and found that its corresponding structure is a controller and a synthesizer, or the equivalents.  Furthermore, the PTAB found that this limitation is not computer-implemented and does not require an algorithm because a controller and a synthesizer are hardware elements.

The CAFC:

            The CAFC agreed with Sony’s argument that the “reproducing means” requires an algorithm to carry out the claimed function.

            The CAFC held that:

“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 microprocessor, programmed to carry out an algorithm,” we have held that “the disclosed structure is not the general purpose 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).

The specification of the ’676 patent discloses 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.”  In fact, Fig. 16 discloses an algorithm in the form of a flowchart.

Therefore, the CAFC held that the “reproducing means” of claims 5 and 8 of the ’676 patent should be construed as computer-implemented and that the corresponding structure is a synthesizer and controller that performs the algorithm described in the specification.

Accordingly, the CAFC vacated the PTAB’s decision and remand for further consideration of whether the Yoshio reference discloses a synthesizer and controller that performs the algorithm described in the specification, or equivalent, and whether the claims would have been obvious over the Yoshio reference.

Standing to Appeal:

The ’676 patent was expired in August 2017.  Petitioners have elected not to participate in the appeal before the CAFC.  The parties have settled the district court infringement suit involving this patent. 

Is there a standing to appeal?

Majority: YES because

  • The parties to this appeal remain adverse and none has suggested the lack of an Article III case or controversy.
  • The PTO argues that the PTAB’s decision should be affirmed.
  • Sony argues that the PTAB’s decision should be reversed and the claims should be patentable.
  • The CAFC’s decision would have a consequence on any infringement that took place during the life of the ’676 patent (past damages subject to the 6-year limitation and the owner of an expired patent can license the rights or transfer title to an expired patent).

Dissenting: NO because

  • No private and public interest (patent expired, petitioner declined to defend its victory, and infringement suit has been settled).
  •  No hint or possibility of present or future case or controversy by both parties and the PTO.

Takeaway:

  • Even if the patent has expired, the patentee has a standing to appeal before the CAFC to dispute the PTAB’s final decision.
  • An algorithm described in the specification for means-plus-function language helped the patentee with a narrow claim construction.

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