software : CAFC Alert

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

| July 8, 2019

Sony Corp. v. Iancu


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.


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 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 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.


  • 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.

The fate of Software inventions related to information processing

| January 28, 2015

Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A. et al.

December 23, 2014

Panel: Chen, Dyk and Taranto.  Opinion by Chen.


The Federal Circuit held that the claims of the asserted patents were invalid as patent-ineligible under 35 U.S.C.S. § 101 because none of asserted claims amounted “to ‘significantly more’ than the abstract idea of extracting and storing data from hard copy documents using generic scanning and processing technology.”

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Surviving Alice Gone Wild

| November 26, 2014

Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l [1], Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”[2] This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions.[3]  The Alice decision essentially eliminated the “special purpose computer” bright line rule as applied generally to computer-implemented inventions.  The new Mayo 2-part §101 test for computer-implemented inventions is, however, fraught with issues from the lack of guidance on how to properly apply it.  Some strategic arguments for surviving a §101 attack are presented in this article, as well as a new way to address what is “significantly more.”

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Practical Points From The Supreme Court’s Alice Decision

| June 26, 2014

Alice Corp. v. CLS Bank Int’l

June 19, 2014


The Supreme Court’s Alice decision does not eliminate software patents as per se ineligible subject matter under 35 USC §101. The Court confirms the application of Mayo’s two step §101 analysis and provides some new considerations for addressing patent eligibility issues for computer-implemented inventions.  Unfortunately, the Supreme Court’s admonition that the mere addition of “conventional” computer functionality to an abstract idea does not transform the claim into patent eligible subject matter conflates the §101 analysis with patentability issues under 35 USC §§102 and 103.

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PTAB Finally Considers “Processor” As Clearly Structure

| June 19, 2014

Ex Parte Cutlip

June 2, 2014

Panel: Lorin, Mohanty and Hoffman.


After the debacle of three March 2013 PTAB decisions by a five judge PTAB panel relying on a strange American Heritage dictionary definition of “processor” as being software, this PTAB decision sets the record straight about a “processor” as clearly being structure.

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Instruction from PTO on Software Composition Claims

| August 28, 2013

Ex parte Mewherter, 2012-007962 (PTAB, 2013)

The Patent Office rarely designates decisions of the Patent Trial and Appeal Board as being “precedential,” but when it does, practitioners take note.  The Patent Office’s designation last week of Ex parte Mewherter, 2012-007692 as falling in that category will be of particular interest to those handling software patent applications. 
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Means-Plus-Function: The Achilles’ Heel

| May 9, 2012

Noah Systems, Inc. v. Intuit, Inc.

April 9, 2012

Panel: Rader, O’Malley and Reyna. Opinion by Judge O’Malley


This decision illustrates that a patent could become invalidated even after surviving challenges of reexamination, which strengthen the presumption of validity, when a challenger discovers the Achilles’ Heel of a means-plus-function claim element resulting in a summary judgment of invalidity by the CAFC.   Noah appeals the granting, by the United States District Court for the Western District of Pennsylvania (DC), of Intuit’s Motion for Summary Judgment of Invalidity of USP 5,875,435 (the ‘435 patent) based on indefiniteness for a means-plus-function claim element without the DC hearing evidence of how one of skill in the art would view the specification.  The CAFC affirms by finding that the specification discloses no algorithm when the specification discloses an algorithm that only accomplishes one of two identifiable functions performed by the means-plus-function limitation.

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