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Sony Corp. v. Iancu

United States Court of Appeals for the Federal Circuit

May 22, 2019, Decided

2018-1172

Opinion

 [*1237]  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-optical disk) 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 nonvolatile memory. '676 patent, Abstract; id. col. 1, ll. 11-15. The specification states [**2]  that the reproducing device is provided with "storing means" for storing the audio information (e.g., audio data recorded in different languages), "reading means" for reading codes associated with the audio information (e.g., 0, 1, 2, and 3 for English, French, German, 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 manufactured 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 "provided 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.

Claim 5 of the '676 patent recites:

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924 F.3d 1235 *; 2019 U.S. App. LEXIS 15117 **

SONY CORPORATION, Appellant v. ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2016-00834.

Disposition: VACATED AND REMANDED.

CORE TERMS

reproducing, specification, algorithm, recording, channel, storing, default, patent, computer-implemented, designated, corresponding, synthesizer, medium, federal court, plurality, recites, means-plus-function, invention, reproduction, implemented, hardware, expired, parties, track

Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Infringement Actions, Claim Interpretation, Means Plus Function Clauses, Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Jurisdiction & Review, Claims & Specifications