ARRIS Intl PLC v. Sony Corp

1. Case Identification

• Case #: IPR2016-00834
• Patent #: 6,097,676
• Filed: April 1, 2016
• Petitioner(s): ARRIS International plc, Pace Ltd., Pace Americas, LLC, Pace Americas Holdings, Inc., and Pace Americas Investments, LLC
• Patent Owner(s): Sony Corporation
• Challenged Claims: 5 and 8

2. Patent Overview

• Title: Information Recording Medium and Reproducing Device Therefor with Codes Representing the Software Category and Channels of Recorded Data
• Brief Description: The ’676 patent discloses an information reproducing device for playing back a recording medium, such as a compact disc, that contains multiplexed audio data for multiple channels. The channels contain similar content translated into different languages, and the device includes a means for storing a default language channel to be reproduced.

3. Grounds for Unpatentability

Ground 1: Claims 5 and 8 are anticipated by Yoshio under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Yoshio (Patent 5,130,816).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yoshio disclosed every limitation of claims 5 and 8. Yoshio described a method and apparatus for reproducing information from a recording medium with plural, multiplexed audio channels corresponding to different languages (e.g., Japanese, English, Chinese). The apparatus included a system controller with ROM and RAM, which Petitioner contended was a "storing means." Yoshio’s controller supplied "predetermined data" indicating a default channel (e.g., CH2) if a user had not made a manual selection. Petitioner argued this predetermined data, necessarily stored in the ROM, met the limitation of a stored default value for designating a language channel. For claim 8, Petitioner asserted that Yoshio’s use of an "identification code" and a "channel number" in the subheader of data blocks met the limitation of "codes representing the kinds of said audio data."

Ground 2: Claims 5 and 8 are obvious over Yoshio in view of Hegendörfer under 35 U.S.C. §103.

• Prior Art Relied Upon: Yoshio (Patent 5,130,816) and Hegendörfer (European Patent No. EP 0 239 760 B1).
• Core Argument for this Ground:
  • Prior Art Mapping: To the extent Yoshio’s disclosure of "predetermined data" was deemed insufficient to teach a "default value," Petitioner argued Hegendörfer supplied this element. Hegendörfer taught a system for broadcast television that used a stored "priority designation" to automatically select a language from a multilingual broadcast. This user-pre-programmed priority list functioned as a set of default values for language selection. Hegendörfer taught storing this priority information "in a suitable form" in the apparatus.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine the references to improve the functionality of Yoshio's device. Both references were in the same field of endeavor (reproducing multilingual audio/video programs). A POSITA would have been motivated to replace Yoshio's simple "predetermined" channel with Hegendörfer’s more robust, user-configurable priority list to create a more user-friendly device.
  • Expectation of Success: Success was expected because implementing Hegendörfer’s software-based rules on Yoshio's microcomputer-controlled system was a known technique to improve a similar device.

Ground 3: Claims 5 and 8 are obvious over Van Luyt in view of Hegendörfer and Ely under 35 U.S.C. §103.

• Prior Art Relied Upon: Van Luyt (Patent 4,794,465), Hegendörfer (European Patent No. EP 0 239 760 B1), and Ely (European Patent Application No. 0 337 609 A2).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented this combination as an alternative invalidity theory based on a different primary reference. Van Luyt disclosed a system for recording and reproducing multiplexed audio-visual data with multiple language tracks on a compact disc. Hegendörfer was cited for its teaching of storing default language priorities, as in Ground 2. Ely was added to explicitly teach storing such defaults in nonvolatile memory. Ely disclosed a broadcast receiver that stored country-specific default "programme identification" codes in a ROM.
  • Motivation to Combine: A POSITA would combine these references to improve Van Luyt's device. While Van Luyt allowed manual language selection, it required user input each time. Incorporating Hegendörfer’s concept of a pre-set default language would improve convenience. Further, it would have been obvious to store these defaults in nonvolatile memory as taught by Ely to ensure the settings were preserved, a common practice for user settings in consumer electronics at the time.
  • Expectation of Success: The combination involved applying known solutions (storing default preferences in nonvolatile memory) to a known problem (improving user convenience) in a predictable manner. Permitting a user to choose a default language was a minor extension of Van Luyt's existing capability to choose a language.

• Additional Grounds: Petitioner asserted that claims 5 and 8 are obvious over Yoshio in view of the knowledge of a POSITA. Petitioner also asserted an additional obviousness challenge based on the combination of Yoshio, Hegendörfer, and Ely.

4. Key Claim Construction Positions

Petitioner argued that three means-plus-function terms required construction under pre-AIA 35 U.S.C. §112(6).

• "storing means for storing a default value" (claims 5 and 8): Petitioner proposed this term should be construed as "nonvolatile memory, or the equivalent." The function was "storing a default value," and the corresponding structure identified in the ’676 patent’s specification was a "nonvolatile memory 16."
• "reading means for reading the codes" (claim 8): Petitioner proposed this term be construed as "a separating circuit, or the equivalent." The function was "reading the codes representing the kinds of the audio data." The structure was identified as the decoders in the ’676 patent that separate signals and read data from packet headers, which a POSITA would understand as a separating circuit.
• "reproducing means for reproducing the audio data" (claims 5 and 8): Petitioner proposed this term be construed as "a controller and a synthesizer, or the equivalent." The function was "reproducing the audio data of the channel designated by the default value." The corresponding structure was identified as "controller 13," which selects the channel, and "synthesizer 11," which converts the digital audio data for output.

5. Relief Requested

• Petitioner requested the Board institute an inter partes review (IPR) and cancel claims 5 and 8 of the ’676 patent as unpatentable under 35 U.S.C. §§ 102 and 103.