In Comcast Cable Communications, LLC v. Promptu Systems Corp.,1 the Federal Circuit held that the plain meaning of the claim phrase “command function” was limited to functions that command an action to be taken. The meaning of this claim phrase turned out to be a focal point, and Comcast lost its invalidity challenge to the claims as a result of this interpretation.
Comcast filed a petition for inter partes review (IPR) of U.S. Patent No. 7,260,538 (the ’538 patent) on the grounds that the contested claims would have been obvious in view of two prior art references—U.S. Patent No. 6,513,063 (Julia) or U.S. Patent No. 7,013,283 (Murdock)—alone or in combination with U.S. Patent No. 5,774,859 (Houser). The Patent Trial and Appeal Board (Board) instituted review and issued a final-written decision in each IPR. The Board rejected Comcast’s interpretation of the claim language “command function” as unreasonably broad. Since Comcast’s contentions were based on its rejected claim interpretation, the Board held that Comcast failed to prove obviousness, including motivation to combine Houser with either prior art reference.2
On appeal, the Federal Circuit affirmed. Comcast asserted the Board incorrectly rejected its interpretation of “command function” in deeming it excessively broad and by determining no motivation to combine Houser with the other prior art references. The court did not agree.3
The court noted that claims are interpreted in accordance with the “broadest reasonable interpretation in light of the specification.”4 The court ruled that there was no reversible error in the Board’s holding that Comcast’s interpretation of “command function” was overly broad. The court explained:
As claimed, “command” is an adjective modifying “function,” limiting that noun to functions that “command.” . . . The plain language of the claim, therefore, unambiguously limits the claimed command function to functions that command an action to be taken. Yet Comcast argues that “command function” includes functions that merely cause an action. That is an unreasonably broad construction: a function may cause (i.e., lead to) an action without commanding (i.e., directing) it. . . . Nothing in the written description shows the patentee intended to deviate from the plain meaning of “command.”5
The court explained that the broadest reasonable interpretation of “command function” could not support functions that simply caused an action.6 In addition, the court held that substantial evidence supported the Board’s holding that Comcast failed to prove a motivation to combine Houser with Julia or Murdock. The Board said, “Comcast provided no reasoning as to how or why the Houser would be combined to yield the claimed invention. According to the court, “the Board simply found that Comcast’s conclusory, threadbare arguments were not enough to establish motivation to combine.”7
Accordingly, the Federal Circuit affirmed the Board’s final-written decisions.8
Lessons:
Words do matter in patent proceedings/litigations. In this case, the patent owner prevailed in a Patent Office contested proceeding based on its asserted claim interpretation, which was based on the plain and ordinary meaning of “command function.” Patent litigants, whether in district court or at the Patent Office, need to formulate their positions in accordance with the accepted claim interpretation framework and provide adequate support for their interpretation. Just as demonstrated in Comcast Cable Communications, LLC v. Promptu Systems Corp., where the claim interpretation was dispositive in the Patent Office proceeding, it can also be dispositive in district court litigation.
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 Comcast Cable Communications, LLC v. Promptu Systems Corporation, ---- Fed.Appx. ----, 2021 USPQ2d 10, 2021 WL 21810 (Fed. Cir. Jan. 4, 2021) (unpublished).
2 Id., slip op. at 2–3.
3 Id., slip op. at 3.
4 Id., slip op. at 3 (quoting 37 C.F.R. § 42.100(b) (2017)).
5 Id., slip op. at 3–4 (citing, e.g., ’538 patent at 7:10–12 (“The command functions are used to control remote control functions such as the gain control.” (emphasis added by court)); see also Joint Appendix 53800894 (Tr. of Oral Arg. before the Board) (counsel for Comcast stating that “[t]he patent uses that phrase basically to mean what you would think. It’s a function that tells the set-top box what to do.”)).
6 Id., slip op. at 4.
7 Id., slip op. at 5 (citing TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1359, 2019 USPQ2d 450563, at *5 (Fed. Cir. 2019) (“[A] conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine.”)).
8 Id., slip op. at 5.