NOTE: This disposition is nonprecedential.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

______________________

2019-2287, 2019-2288

______________________

Appeals from the United States Patent and Trademark 

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

00344, IPR2018-00345.

______________________

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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 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, in which the Patent Trial and Appeal Board held that Comcast failed to 

prove claims 1, 2, 4–6, 12–15, 17–19, 25–28, 30–32, 38–42, 

53–55, 61, 62, 64–66 (the challenged claims) of U.S. Patent 

No. 7,047,196 would have been obvious. For the following 

reasons, we affirm-in-part, vacate-in-part, and remand.

BACKGROUND

The ’196 patent relates to a “method and system of 

speech recognition presented by a back channel from multiple user sites within a network.” ’196 patent at Abstract. 

Representative claims 1 and 14 recite: 

1. A method of using a back channel containing a 

multiplicity of identified speech channels from a 

multiplicity of user sites presented to a speech processing system at a wireline node in a network supporting at least one of cable television delivery and 

video delivery, comprising the steps of:

receiving said back channel to create a 

received back channel; 

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partitioning said received back channel 

into a multiplicity of received identified 

speech channels; 

processing said multiplicity of said received 

identified speech channels to create a multiplicity of identified speech content; and

responding to said identified speech content to create an identified speech content 

response that is unique, for each of said 

multiplicity of identified speech contents. 

. . .

14. A program system controlling at least part of a 

speech recognition system coupled to a wireline node in a network, said program system comprising the program steps of:

processing a multiplicity of received identified speech channels to create a multiplicity of identified speech content; and

responding to said identified speech content to create an identified speech content 

response that is unique to each of said multiplicity of identified speech contents;

wherein said speech recognition system is 

provided said multiplicity of received identified speech channels based upon a received back channel at said wireline node 

from a multiplicity of user sites coupled to 

said network;

wherein each of said program steps reside 

in memory accessibly coupled to at least 

one computer included in said speech 

recognition system; wherein said at least 

one computer communicatively couples 

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through said wireline node to said multiplicity of user sites; and

wherein said network supports at least one 

of the collection comprising: cable television delivery to said multiplicity of user 

sites; and video delivery to said multiplicity 

of user sites.

’196 patent at 50:62–51:10, 52:65–53:21 (emphases added). 

Comcast petitioned for two IPRs of the ’196 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)—individually or combined with additional references. Review was 

instituted, and the Board issued final-written decisions in 

both IPRs. In IPR2018-00345, the Board determined that 

the “speech recognition system” and “wireline node” in 

claim 14’s preamble are different elements. Because Comcast mapped the “speech recognition system” and the “wireline node” to a single element, the Board held Comcast 

failed to show claims 14, 15, 17–19, 25, 26, 53–55, 61, 62, 

and 64–66 were unpatentable. The Board also declined to 

consider Comcast’s new mapping of the “speech recognition 

system” in reply. In IPR2018-00344, the Board determined 

the “back channel” and “received back channel” in claim 1

are distinct elements, rather than a relabeling of one element. Because Comcast failed to allege any reference 

teaches the “received back channel,” the Board held that

Comcast failed to show claims 1, 2, 4–6, 12, 13, 27, 28, 30–

32, and 38–42 were unpatentable. Comcast appeals. We 

have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

“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. 

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Cir. 2017). Because Comcast filed its petitions before November 13, 2018, we construe claims in the unexpired ’196

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

(2017). “Decisions related to compliance with the Board’s 

procedures,” like considering new arguments raised in reply, “are reviewed for an abuse of discretion.” Intelligent 

Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 

1367 (Fed. Cir. 2016). 

I

For IPR2018-00345, Comcast argues the Board erred 

by determining that claim 14’s “speech recognition system” 

and “wireline node” are different elements. It also argues 

the Board erred by not considering its new mapping in reply. We do not agree.1 

We see no reversible error in the Board’s construction 

requiring that the “speech recognition system” and “wireline node” be distinct elements. Claim 14 recites “a speech 

recognition system coupled to a wireline node.” By listing 

the elements separately and by using the word “coupled,” 

claim 14 strongly indicates the “speech recognition system” 

is distinct from the “wireline node.” See Becton, Dickinson 

& Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 

(Fed. Cir. 2010) (“Where a claim lists elements separately, 

the clear implication of the claim language is that those elements are distinct components of the patented invention.”

(cleaned up)). While the ’196 patent’s written description 

contains an embodiment where a speech recognition system is “in” a wireline node, it also describes an embodiment 

with a speech recognition system “near” a wireline node. 

See ’196 patent at 5:11–15. Thus, the written description 

does not show a “clear intent” to depart from the claim’s 

1 We need not reach Comcast’s arguments regarding 

Murdock’s status as prior art.

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plain language. See Hill-Rom Servs., Inc. v. Stryker Corp., 

755 F.3d 1367, 1373 (Fed. Cir. 2014). The broadest reasonable interpretation of “coupled to” requires that the “speech 

recognition system” and “wireline node” are distinct components. 

Nor do we see any abuse of discretion in declining to 

consider Comcast’s new mapping raised for the first time 

in reply. “It is of the utmost importance that petitioners in 

the IPR proceedings adhere to the requirement that the initial petition identify with particularity the evidence that 

supports the grounds for the challenge to each claim.” Intelligent Bio-Sys., 821 F.3d at 1369 (internal quotation 

omitted). The Board correctly identified Comcast’s mapping for the “speech recognition system” raised in reply as 

absent from Comcast’s petition. Compare J.A. 19604521 & 

19604524–25 with J.A.19604823–25. And Comcast has not 

come forward with a sufficient justification to excuse that 

failure. Thus, the Board acted within its broad discretion

in declining to consider Comcast’s new reply arguments. 

See Intelligent Bio-Sys., 821 F.3d at 1369–70.

We have considered Comcast’s remaining arguments 

regarding the IPR2018-00345 final-written decision and 

find them unpersuasive. Therefore, we affirm that decision, which held that Comcast failed to show claims 14, 15, 

17–19, 25, 26, 53–55, 61, 62, and 64–66 were unpatentable.

II

For IPR2018-00344, Comcast challenges the Board’s 

claim construction. It contends the Board erred in construing “received back channel” in claim 1. To Comcast, the 

“received back channel” is merely a relabeled “back channel.” Under the broadest reasonable interpretation standard, we agree. 

Comcast’s posed construction is broader than the 

Board’s adopted construction and is consistent with the 

specification. The Board required Comcast to prove an 

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additional element, “to create a received back channel.” 

But, as Comcast argues, the broadest reasonable interpretation of “receiving said back channel to create a received 

back channel” is not so limited. One may read the “received 

back channel” as merely the “back channel” after being received. Under such a reading, the phrase “to create a received back channel” describes the result of “receiving” the 

“back channel.” Nothing in the claim’s plain language forecloses such a reading. Nor does the written description 

narrow the claim’s plain language; in fact, the specification 

treats the “back channel” and “received back channel” as 

interchangeable. Compare ’196 patent at 40:1–2 (discussing partitioning the “back channel”) with id. at 51:3–4 

(claiming portioning the “received back channel”). Although atypical and inartful, it is not unreasonable for the 

patentee to apply two different time frames to the same 

claim element, a “back channel” before receipt and a “received back channel” after receipt. And this construction 

does not result in surplusage because every claimed term, 

including “to create” and “received,” has meaning. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 

2006) (“[C]laims are interpreted with an eye toward giving 

effect to all terms in the claim.”). Ultimately, the broadest 

reasonable interpretation of “received back channel” is a 

“back channel that has been received.” 

Because the IPR2018-00344 final-written decision is 

predicated on the Board’s erroneous construction, we vacate and remand for the Board to consider the parties’ arguments under the correct construction. 

CONCLUSION

Based on the foregoing, we affirm-in-part, vacate-inpart, and remand. 

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED

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COSTS

No costs.

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