NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

COMCAST CABLE COMMUNICATIONS, LLC,

Appellant

v.

PROMPTU SYSTEMS CORPORATION,

Appellee

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________

2019-1947, 2019-1948

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2018-

00340, IPR2018-00341.

______________________

Decided: January 4, 2021

______________________

MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP, 

Washington, DC, for appellant. Also represented by 

JESSICA A. HUDAK, Irvine, CA; JAMES L. DAY, JR., Farella 

Braun Martel LLP, San Francisco, CA. 

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COMCAST CABLE COMMUNICATIONS v. PROMPTU SYSTEMS 

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 JACOB ADAM SCHROEDER, Finnegan, Henderson, 

Farabow, Garrett & Dunner, LLP, Palo Alto, CA, for appellee. Also represented by JOSHUA GOLDBERG, Washington, 

DC. 

 DANIEL KAZHDAN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, for intervenor. Also represented by THOMAS W. KRAUSE, FRANCES 

LYNCH, FARHEENA YASMEEN RASHEED. 

 ______________________

Before LOURIE, SCHALL, and MOORE, Circuit Judges.

MOORE, Circuit Judge.

Comcast Cable Communications, LLC, appeals two inter partes review final-written decisions,1 in which the Patent Trial and Appeal Board held that Comcast failed to 

prove claims 1–7, 17–24, 33–35, 37, and 40–41 (the challenged claims) of U.S. Patent No. 7,260,538 would have 

been obvious. For the following reasons, we affirm.

BACKGROUND

Comcast petitioned for IPR of the ’538 patent, arguing 

the challenged claims would have been obvious in light of

two primary 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). Review 

was instituted, and the Board issued a final-written decision in each IPR. It rejected Comcast’s reading of the 

claimed “command function” term as unreasonably broad.2

1 Consistent with the parties’ briefing, we do not differentiate between the two FWDs (IPR2018-00340, 

IPR2018-00341), and only cite the -340 decision.

2 Consistent with the parties’ usage, we treat the 

“set-top-box-compatible instruction” limitation in claims 34 

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J.A. 53800031–33; see, e.g., ’538 patent at 9:35–36, 13:54–

56. Because Comcast’s arguments had been predicated on 

its rejected construction, the Board held that Comcast had

failed to show the challenged claims would have been obvious over Julia alone or Murdock alone. Likewise, because 

the Board found no motivation to combine Houser with either primary reference, it held that Comcast’s remaining 

grounds failed. Separately, the Board held that Comcast 

had failed to prove obviousness for means-plus-function 

claim 18 because it had not identified the structure corresponding to the recited function for one of the claim’s elements. Comcast appeals. We have jurisdiction under 28 

U.S.C. § 1295(a)(4)(A).

DISCUSSION

Comcast raises a panoply of arguments challenging the 

Board’s final-written decisions. Primarily, it claims the 

Board erred by rejecting its construction of “command function” as overly broad and by finding no motivation to combine Houser with the primary references. We do not agree. 

I

“We review the Board’s constructions based on intrinsic evidence de novo and its factual findings based on extrinsic evidence for substantial evidence.” HTC Corp. v. 

Cellular Commc’ns Equip., LLC, 877 F.3d 1361, 1367 (Fed. 

Cir. 2017). Because Comcast filed its petitions before November 13, 2018, we construe claims in the unexpired ’538 

patent according to their “broadest reasonable interpretation in light of the specification.” 37 C.F.R. § 42.100(b) 

(2017).

We see no reversible error in the Board’s rejection of

Comcast’s construction of “command function” as overly 

and 40–41 interchangeably with the “command function” 

limitation in claims 1, 2, and 18. 

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broad. As claimed, “command” is an adjective modifying 

“function,” limiting that noun to functions that “command.” 

See Appellant Br. at 39 (arguing “command” modifies 

“function”). 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. See J.A. 

53800031–32 (“For instance, a function may be performed 

upon the satisfaction of a condition, e.g., when A happens, 

then do B. Although B is performed as a result of A occurring, A is not a command to perform B.”). Nothing in the 

written description shows the patentee intended to deviate 

from the plain meaning of “command.” See, 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)); see also J.A. 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.”). 

Thus, the claims’ broadest reasonable interpretation cannot support functions that merely cause an action. See 

Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1373 

(Fed. Cir. 2014) (“[T]o deviate from the plain and ordinary 

meaning of a claim term . . . the patentee must, with some 

language, indicate a clear intent to do so in the patent.”). 

Comcast’s arguments fail to persuade us otherwise. 

II

“The Board’s motivation to combine finding is reviewed 

for substantial evidence.” Outdry Techs. Corp. v. Geox 

S.p.A., 859 F.3d 1364, 1368 (Fed. Cir. 2017). “A finding is 

supported by substantial evidence if a reasonable mind 

might accept the evidence to support the finding.” Allied 

Erecting & Dismantling Co. v. Genesis Attachments, LLC, 

825 F.3d 1373, 1380 (Fed. Cir. 2016).

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Substantial evidence supports the Board’s finding that 

Comcast failed to show a motivation to combine Houser 

with Julia or Murdock. The Board found that “the record 

lack[ed] ‘explanation as to how or why the reference would 

be combined to produce the claimed invention.’” J.A. 

53800026 (quoting TriVascular, Inc. v. Samuels, 812 F.3d 

1056, 1066 (Fed. Cir. 2016)). It did not supplant KSR’s flexible test, as Comcast argues. See KSR Int’l Co. v. Teleflex 

Inc., 550 U.S. 398, 417 (2007). Instead, the Board simply 

found that Comcast’s conclusory, threadbare arguments 

were not enough to establish motivation to combine. See 

TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 

(Fed. Cir. 2019) (“[A] conclusory assertion with no explanation is inadequate to support a finding that there would 

have been a motivation to combine.”). Specifically, it found 

Comcast had not proven a motivation to combine because 

it merely (1) alleged the references came from the same 

field of study and address the same problem; and (2) recited boilerplate legal conclusions untethered to any claim 

language. We hold those findings are supported by substantial evidence.

CONCLUSION

We have considered Comcast’s remaining arguments 

and find them unpersuasive.3 Because Comcast has not 

identified reversible error in the Board’s final-written decisions, we affirm. 

AFFIRMED

3 We need not reach Comcast’s arguments regarding 

claim 18.

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