United States Court of Appeals 

for the Federal Circuit ______________________

SONY CORPORATION,

Appellant

v.

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________

2018-1172

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2016-

00834.

______________________

Decided: May 22, 2019

______________________

SCOTT ANTHONY MCKEOWN, Ropes & Gray LLP, Washington, DC, argued for appellant. Also represented by 

DOUGLAS HALLWARD-DRIEMEIER; HENRY HUANG, East Palo 

Alto, CA. 

 ROBERT MCBRIDE, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor. Also represented by THOMAS W. KRAUSE. 

 ______________________
2 SONY CORP. v. IANCU

Before PROST, Chief Judge, NEWMAN and DYK, Circuit 

Judges.

Opinion for the court filed by Circuit Judge DYK.

Dissenting opinion filed by Circuit Judge NEWMAN.

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 unpatentable 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 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. 
SONY CORP. v. IANCU 3

Claim 5 of the ’676 patent recites:

5. An information reproducing device for reproducing an information recording medium in which audio data of plural channels are multiplexedly 

recorded, the information reproducing device comprising:

storing means for storing a default value 

for designating one of the plural channels 

to be reproduced; and

reproducing means for reproducing the audio data of the channel designated by the 

default value stored in the storing means; 

and

wherein a plurality of voice data, each voice 

data having similar contents translated 

into different languages are multiplexedly 

recorded as audio data of plural channels; 

and a default value for designating the 

voice data corresponding to one of the different languages is stored in the storing 

means.

Id. col. 12, ll. 28–43. Claim 8 recites the same limitations 

as claim 5 and additionally recites that “codes representing 

the kinds of the audio data” are multiplexedly recorded in 

the information recording medium, that the information 

reproducing device includes “reading means” for reading 

the codes, and that the reproducing means is for reproducing the audio data “according to the codes read by the reading means.” Id. col. 13, ll. 1–21.

The Board instituted inter partes review as to claims 5 

and 8 of the ’676 patent. The primary focus during inter 

partes review was whether the “reproducing means” limitation was computer-implemented and required an algorithm. 
4 SONY CORP. v. IANCU

On September 28, 2017, the Board issued a final decision finding the claims unpatentable as obvious over U.S. 

Patent No. 5,130,816 to Yoshio (“Yoshio”). The Board construed the “reproducing means” limitation as a meansplus-function limitation. The Board explained that the recited function is “reproducing the audio data of the channel 

designated by the default value stored in the storing 

means.” Arris Int’l PLC v. Sony Corp., IPR2016-00834, 

2017 WL 4349410, at *4 (P.T.A.B. Sept. 28, 2017). The 

Board determined that the structure that performs these 

functions is “a controller and a synthesizer, or the equivalent.” Id. at *12. The Board further concluded that the 

limitation is not computer-implemented and does not require an algorithm because “synthesizer 11 and controller 

13 both are shown and described in the ’676 patent as discrete hardware elements.” Id. at *5, 9. 

The Board found that Yoshio taught most of the limitations of claims 5 and 8 and that the claims would have been 

obvious over Yoshio. Yoshio is directed to “a method and 

apparatus of recording and reproducing information, in 

which a plurality of audio signals corresponding to speech 

in a plurality of languages can be recorded on a recording 

medium” (e.g., a video disc or a digital audio disc) and in 

which “an audio signal corresponding to the speech in a desired language can be obtained from among the plurality of 

audio signals recorded on the recording medium.” Yoshio, 

col. 1, ll. 43–50. Yoshio taught that audio signals of five 

channels (e.g., CH1, CH2, CH3, CH4, and CH5 for sound 

effects, Japanese, English, Chinese, and Korean, respectively) can be recorded. Yoshio further disclosed a computer-implemented “system controller” that detects 

whether a channel has been designated and supplies data 

indicating the designated channel, or data indicating a predetermined channel if no channel was designated, to an 

ADPCM decoder and graphics decoder to select the 
SONY CORP. v. IANCU 5

channel. Based on the channel designated, the audio track 

in the corresponding language is played.

Sony appeals. Petitioners have elected not to participate in the appeal, and the Director of the U.S. Patent and 

Trademark Office intervened to defend the Board’s decision. This court has jurisdiction pursuant to 28 U.S.C. 

§ 1295(a)(4)(A).1 

 

1 The dissent urges that there is no longer “a live 

case or controversy sufficient to satisfy Article III” because

the ’676 patent expired in August 2017, petitioners have

elected not to participate in the appeal, and the parties 

have settled the district court infringement suit involving 

the ’676 patent. Dissent Op. at 1. 

The parties to this appeal remain adverse, and no party 

has suggested the lack of an Article III case or controversy. 

The Director argues that the Board’s decision finding 

claims 5 and 8 of the ’676 patent unpatentable should be 

affirmed (which would result in “the Director . . . issu[ing] 

and publish[ing] a certificate canceling [the] claim[s],” 35 

U.S.C. § 318(b)). Sony argues that the Board’s decision 

should be reversed and the claims should be found patentable. This presents an Article III controversy.

Even if the existence of a potential infringement suit

were relevant, there has been no showing that such a controversy does not exist, as would be required for mootness. 

See Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 

98 (1993). It is well-established that our decision (and the 

Board’s decision on remand) would have a consequence on 

any infringement that occurred during the life of the ’676 

patent. See Genetics Inst. v. Novartis Vaccines, 655 F.3d 

1291, 1299 (Fed. Cir. 2011) (“[A]n expired patent may form 

the basis of an action for past damages subject to the sixyear limitation under 35 U.S.C. § 286.”); see also Keranos, 

LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025, 1033
6 SONY CORP. v. IANCU

DISCUSSION

We review the Board’s legal conclusions de novo and its 

factual findings for substantial evidence. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. 

Cir. 2015). We review the ultimate question of the proper 

construction of a patent de novo, with any underlying fact 

findings reviewed for substantial evidence. In re Cuozzo 

Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015). 

The ’676 patent expired in August 2017. During inter 

partes review proceedings, claims of an expired patent are 

construed using the framework set forth in Phillips v. AWH 

Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Wasica 

Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279 

(Fed. Cir. 2017). 

Sony’s primary argument on appeal is that the Board 

erred in construing the “reproducing means” limitation. 

Claims 5 and 8 both recite, in pertinent part, “reproducing 

means for reproducing the audio data of the channel designated by the default value stored in the storing means.” 

’676 patent, col. 12, ll. 28–43 (emphasis added); id. col. 13,

ll. 11–21. There is no dispute that the “reproducing means” 

limitation is a means-plus-function limitation, invoking 35 

U.S.C. § 112 ¶ 6.2

 

(Fed. Cir. 2015) (Although “the patentee has fewer rights 

to transfer when the patent has expired,” the owner of an 

expired patent can license the rights or transfer title to an 

expired patent.); Mars, Inc. v. Coin Acceptors, Inc., 527 

F.3d 1359, 1372 (Fed. Cir. 2008) (“Title to . . . an expired

patent . . . includes more than merely the right to recover 

damages for past infringement.”).

2 Because the application that led to the ’676 patent 

was filed before March 16, 2013, pre-AIA 35 U.S.C. § 112 

applies here.
SONY CORP. v. IANCU 7

The first step in construing a means-plus-function claim 

limitation is to determine the function of the limitation. 

Golight, Inc. v. Wal–Mart Stores, Inc., 355 F.3d 1327, 1333 

(Fed. Cir. 2004). Here, Sony and the Director agree that 

the function performed by the reproducing means is “reproducing the audio data of the channel designated by the default value stored in the storing means.”

After identifying the function of the means-plus-function claim limitation, the next step is to determine the corresponding structure disclosed in the specification. Id. at 

1334. “Under this second step, structure disclosed in the 

specification is corresponding structure only if the specification or prosecution history clearly links or associates that 

structure to the function recited in the claim.” Id. (quoting 

Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 

344 F.3d 1205, 1210 (Fed. Cir. 2003)). 

“In cases involving a computer-implemented invention 

in which the inventor has invoked means-plus-function 

claiming, this court has consistently required that the 

structure disclosed in the specification be more than simply 

a general purpose computer or microprocessor.” Aristocrat 

Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 

1333 (Fed. Cir. 2008). For means-plus-function claims “in 

which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm,” we have 

held that “the disclosed structure is not the general purpose computer, but rather the special purpose computer 

programmed to perform the disclosed algorithm.” WMS 

Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. 

Cir. 1999).

Before the Board, Sony’s primary argument was that 

the “reproducing means” limitation is implemented on a 

computer and thus, under our precedent, requires an algorithm to carry out the claimed function. The Board disagreed and held that the limitation is implemented in 
8 SONY CORP. v. IANCU

hardware and accordingly does not require an algorithm. 

Specifically, the Board concluded that the corresponding 

structure of the reproducing means is “a controller and a 

synthesizer, or the equivalent.” Arris, 2017 WL 4349410, 

at *12. The Board further explained that “[a]lthough the 

specification of the ’676 patent includes steps that could be 

termed an algorithm and that could be implemented on a 

computer, we agree with Petitioner that does not mean 

that the controller is ‘computer-implemented’ or require 

that the construction must include the algorithm.” Id. at 

*10.

Although the parties appear to agree on appeal that the 

specification contemplates a hardware-implementation of 

the reproducing means, we think Sony’s original position 

was correct. We are not bound by the parties’ arguments 

as to claim construction. See Exxon Chem. Patents, Inc. v. 

Lubrizol Corp., 64 F.3d 1553, 1555–58 (Fed. Cir. 1995)

(“[T]he [court] has an independent obligation to determine 

the meaning of the claims, notwithstanding the views asserted by the adversary parties.”). 

On its face, the ’676 patent refers to a computer-implementation of the reproducing means. The specification 

states that the “reproducing means comprises a synthesizer 11 and a controller 13.” ’676 patent, col. 3, ll. 18–19. 

The specification further explains that “[i]n reproducing 

such a recording medium by using the reproducing device 

of the present invention, the processing as shown in FIG. 

16 is executed.” Id. col. 11, ll. 10–12 (emphasis added). Figure 16, in turn, discloses an algorithm in the form of a 

flowchart.

If the controller of the reproducing means were implemented in hardware, we would expect the patent to describe or refer to the circuitry of the controller that would 

be required for a hardware controller to perform the 

claimed function. The ’676 patent does not do so. 
SONY CORP. v. IANCU 9

Therefore, despite testimony of petitioners’ expert that a 

person of ordinary skill in the art would understand that 

the controller of the reproducing means “need not necessarily be computer-implemented” and “is more likely implemented in hardware,” J.A. 1261–64, we think that the 

reproducing means is necessarily construed as computerimplemented based on the specification. 

Since we conclude that the reproducing means limitation is computer-implemented, the corresponding structure

must include an algorithm. See WMS Gaming, 184 F.3d at 

1349. The specification describes the flowchart algorithm 

of Figure 16 as follows: 

In reproducing such a recording medium by using 

the reproducing device of the present invention, the 

processing as shown in FIG. 16 is executed. First, 

reproduction of a desired track is commanded 

through the digitizer 17 (step S31). For instance, 

when reproduction of the track #3 is commanded, 

the controller 13 controls the drive 2 to start reproduction of the track 3. The start of reproduction is 

awaited (step S32). If the reproduction is started, 

the controller 13 reads the track header from the 

output from the decoder 4 and reads the number of 

multiplex sound and language data (step S33). 

Further, the controller 13 reads default language 

data from the nonvolatile memory 16 (step S34), 

and determines whether or not the multiplex audio 

data contains audio data according with the default 

language data (step S35). If the audio data accords 

with the default language data, the controller 13 

controls the synthesizer 11 to select the audio data 

according with the default language data (step 

S36). If the multiplex audio data does not contain 

the audio data according with the default language 

data, the controller 13 controls the synthesizer 11 
10 SONY CORP. v. IANCU

to select audio data located at the first position in 

the multiplex audio data (step S37).

’676 patent, col. 11, ll. 10–32. 

The ’676 patent specification clearly links the function 

of the “reproducing means” to the algorithm flowchart of 

Figure 16. The specification explains that “[i]n reproducing such a recording medium by using the reproducing device of the present invention, the processing as shown in 

FIG. 16 is executed.” Id. col. 11, ll. 10–12. “When a patent 

. . . describes the features of the ‘present invention’ as a 

whole,” as it does here, “this description limits the scope of 

the invention.” Verizon Servs. Corp. v. Vonage Holdings 

Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). Indeed, petitioners’ expert relied on the algorithm disclosed in the ’676 

patent in describing how the controller performs the function of the reproducing means. 

We conclude that the “reproducing means” limitation of 

claims 5 and 8 of the ’676 patent is more appropriately construed as computer-implemented, and that the corresponding structure is a synthesizer and controller that performs 

the algorithm disclosed in the specification. The Board did 

not reach the question of whether Yoshio, which is computer-implemented, disclosed the algorithm of the ’676 patent or the equivalent. Accordingly, we vacate the Board’s 

decision and remand for further consideration of whether 

Yoshio discloses a synthesizer and controller that performs 

the algorithm disclosed in the specification, or the equivalent, and whether the challenged claims would have been

obvious over Yoshio.

VACATED AND REMANDED

COSTS

No costs.
United States Court of Appeals 

for the Federal Circuit ______________________

SONY CORPORATION,

Appellant

v.

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________

2018-1172

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2016-

00834.

______________________

NEWMAN, Circuit Judge, dissenting.

The threshold question on appellate jurisdiction is

whether there is a live case or controversy sufficient to satisfy Article III. The only patent on appeal, U.S. Patent

No. 6,097,676, expired in August 2017; the IPR petitioner,

ARRIS, declines to defend its PTAB victory; and the parties 

have settled the infringement suit in district court. There 

is no interest, neither private interest nor public interest, 

in the fate of this patent. There appears to be no consequence of either our appellate decision today or the 
2 SONY CORPORATION v. IANCU

potential PTAB decision on the remand now ordered by the 

court.1 This appeal fails the requirements of Article III.

“No principle is more fundamental to the judiciary’s 

proper role in our system of government than the constitutional limitation of federal-court jurisdiction to actual cases 

or controversies.” Raines v. Byrd, 521 U.S. 811, 818 (1997) 

(quoting Simon v. E. Ky. Welfare Rights Org., 426 U.S. 26, 

37 (1976)). Federal courts are limited to their constitutional authority, and “[i]f a dispute is not a proper case or 

controversy, the courts have no business deciding it, or expounding the law in the course of doing so.” DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 341 (2006).

Every federal court has the obligation to assure its own

jurisdiction:

[T]he rule, springing from the nature and limits of 

the judicial power of the United States, is inflexible 

and without exception, which requires this court, of 

its own motion, to deny its own jurisdiction, and, in 

the exercise of its appellate power, that of all other 

courts of the United States, in all cases where such 

jurisdiction does not affirmatively appear in the 

record on which, in the exercise of that power, it is 

called to act. On every writ of error or appeal, the 

first and fundamental question is that of jurisdiction, first, of this court, and then of the court from 

which the record comes. This question the court is 

bound to ask and answer for itself, even when not 

 

1 The PTO Director, intervening “to defend the 

Board’s decision,” does not explain the agency’s interest in 

further judicial and administrative proceedings on this patent that expired 20 months ago and is now devoid of controversy. The panel majority’s description of the Director 

as a party that “remain[s] adverse,” is not explained.
SONY CORPORATION v. IANCU 3

otherwise suggested, and without respect to the relation of the parties to it.

Bender v. Williamsport Area Sch. Dist., 475 U.S. 534, 546–

47 (1986) (quoting Mansfield, C. & L.M. Ry. Co. v. Swan, 

382 (1884)). 

The rule that “[t]o qualify as a case fit for federal-court 

adjudication, ‘an actual controversy must be extant at all 

stages of review’” includes review by a federal court of 

agency action. See Arizonans for Official English v. Arizona, 520 U.S. 43, 67 (1997) (quoting Preiser v. Newkirk, 

422 U.S. 395, 401 (1975)); see also Lewis v. Cont’l Bank 

Corp., 494 U.S. 472, 477 (1990) (“This case-or-controversy 

requirement subsists through all stages of federal judicial 

proceedings, trial and appellate. To sustain our jurisdiction in the present case, it is not enough that a dispute was 

very much alive when suit was filed . . . .”). Such a rule 

follows ineluctably from the proposition that the court “is 

not empowered to decide moot questions or abstract propositions.” North Carolina v. Rice, 404 U.S. 244, 246 (1971) 

(quoting United States v. Alaska S.S. Co., 253 U.S. 113, 116 

(1920)).

A necessary question is whether there remain any consequences of our appellate decision. As the party seeking 

judicial review, “[i]t is the responsibility of [Sony] clearly to

allege facts demonstrating that [it] is a proper party to invoke judicial resolution of the dispute and the exercise of 

the court’s remedial powers.” Renne v. Geary, 501 U.S. 312, 

316 (1991) (internal quotation marks and citation omitted). 

Here, appellant Sony must establish its continuing interest 

“‘when it seeks review of an agency’s final action in a federal court,’ by creating a necessary record in this court, if 

the record before the Board does not” so establish. JTEKT 

Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1220 (Fed. Cir. 

2018) (quoting Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 

1168, 1172 (Fed. Cir. 2017)). 
4 SONY CORPORATION v. IANCU

Although a patentee has an indisputable interest in the 

validity of its patent, here the patent has expired and the 

district court litigation was terminated. Appellant’s Br. 2 

n.1. In the “Statement of Related Cases” Sony “inform[ed] 

the Court that U.S. Patent No. 6,097,676 was asserted in 

litigation captioned as Sony Corp. v. ARRIS Global Ltd., 

No. 1:15-cv-00288 (D. Del.).” However, that litigation was 

terminated and dismissed with prejudice, at the joint request of the parties, on November 28, 2017. Sony Corp. v. 

ARRIS Global Ltd., No. 1:15-cv-00288 (D. Del.), ECF 

No. 286 (“Stipulation and Order for Dismissal”). Sony also 

mentions the concurrent appeal on a different patent, Sony 

Corp. v. Iancu, No. 18–1173, but no connection is asserted 

between these appeals.

Sony states that it “is unaware of any other case pending” upon which our decision will have an effect, and recites 

no other consequence of this appeal, with respect to ARRIS 

or any other entity. Appellant’s Br. viii. The Court’s precedent leaves no room for the speculative circumstances posited by my colleagues. “Article III of the Constitution 

requires that there be a live case or controversy at the time 

that a federal court decides the case.” Burke v. Barnes, 479 

U.S. 361, 363 (1987). No such circumstance is mentioned, 

nor even hinted, by any party or the intervenor.

The record contains not even a remote suggestion of 

possible future litigation or other potential actions by unidentified acquirers of this expired patent. The panel majority searches for a possible case-or-controversy, proposing 

that there may be speculative or unspecified circumstances. Maj. Op. 5 n.1. However, “[w]e presume that federal courts lack jurisdiction unless the contrary appears 

affirmatively from the record.” Renne, 501 U.S. at 316 (internal quotation marks omitted) (quoting Bender, 475 U.S. 

at 546)). If such possibility indeed exists, it was Sony’s obligation to say so, for the “burden of establishing” that the 

requirements of Article III are met is placed on “the party 

seeking judicial review.” JTEKT, 898 F.3d at 1220; see also 
SONY CORPORATION v. IANCU 5

Phigenix, 845 F.3d at 1171 (placing the burden on the appellant).

No possibility of present or future case-or-controversy 

has been suggested—not by Sony, not by the vanished 

party ARRIS, not by the intervenor Director. Whether or 

not the PTAB erred in its decision, now that all known past, 

present, and future controversy has vanished, further proceedings are devoid of juridical content.2

On the record before us, both the court’s decision on 

this appeal and our remand for further PTAB proceedings

are devoid of substance and consequence—they thus appear to be advisory. And “[a]s is well known the federal 

courts established pursuant to Article III of the Constitution do not render advisory opinions.” United Pub. Workers 

of Am. (C.I.O.) v. Mitchell, 330 U.S. 75, 89 (1947).

This appeal should be dismissed. From my colleagues’ 

departure from the principles of Article III and the judicial 

role, I respectfully dissent.

 

2 Other cases have raised various aspects of implementation of the America Invents Act, including application of “relaxed” jurisdictional standards, the effects of 

estoppel, and vacatur of unappealable decisions. However, 

such aspects are not here raised.