• Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentable
  PTAB · Mar 29, 2019 · IPR2018-00340 · APJ Alex S Yap · IPR · Final written decision

  Claims 1–7, 17–24, and 33 were not shown unpatentable under any asserted § 103 ground because the petition failed to establish the claimed command function.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) applies§112(f) does not applyMixed

    “specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). As the Federal Circuit has noted, “‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.’” Saffran v. Johnson & Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). We are not persuaded that Petitioner has identified sufficient corresponding structure for this means-plus-function limitation. Here, Petitioner contends that the corresponding structure for performing the recited function is “‘a processor’ and equivalents.” Pet. 11. Petitioner’s expert further opines that “the patent identifies the Motorola DCT-2000 set-top box (’538 Patent[,] 3:51–52), and a person of ordinary skill in the art would have known that the DCT-2000 includes a processor that executes command functions from the cable head-end.” Ex. 1022 ¶ 138. However, for means-plus-function limitations,” slip op. at 18

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Not shown unpatentable

    “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (en banc) (“In cases . . . involving a claim limitation that is subject to § 112, para. 6 that must be implemented in a special purpose computer, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor[; it must] disclose an algorithm for performing the claimed function.”) (citations omitted); Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). We decline to adopt Petitioner’s proposed construction because Petitioner has not explained sufficiently that the recited function for this term (“responsive to receipt of the command functions for executing the command functions”) is a basic computer function that would not require a special purpose computer, nor has Petitioner directed us to any portion of the Specification sufficient to link a structure (i.e., an algorithm)4 to the recited function. The reference to “a processor” without specifying the algorithm is too generic to identify any specific structure. In Aristocrat, the Federal Circuit stated that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Id., emphasis added. As the Federal Circuit explained, “a general purpose computer programmed to carry out a particular algorithm creates a ‘new machine’ because a general purpose computer ‘in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.’” 521 F.3d at 1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also WMS Gaming, Inc. v. Int’l Game Techs., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Consequently, the specification must disclose enough of a specific algorithm to provide the necessary structure under § 112, sixth paragraph. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Allowing a computer programmed to perform a specialized function to be claimed without disclosure of the algorithm used for that programming would exhibit the same type of impermissible overbreadth of purely functional claims. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).” slip op. at 19

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “includes a set-top box compatible command function” because “while the references’ disclosures broadly indicate that their set-top boxes receive some information from a remote network location,” the information does not require a command to be sent for decoding or formatting. Ex. 2033 ¶ 43. Specifically, Mr. Tinsman testifies: Cable digital television content is typically transmitted as compressed data that must be decompressed by the set-top box for display on a television. Such content information is generally comprised of the compressed video data accompanied by metadata describing the content data to the set-top box, including, e.g., details of the data’s format. A POSITA would know that a set-top box does not need to receive specific instructions to perform a function every time it receives content data. Instead, the video decoder in the set top box automatically decodes the incoming data for display on a television without needing specific instructions to do so from the head-end unit. Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require a command to be sent. Resp. 29–30 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible command function’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 178. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that decoding and formatting information does not necessarily require a command to be sent. See Ex. 2034, 50:20–24.” slip op. at 29

  Patent outcomesUS 7,260,538 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,260,538

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.