Case: 19-1947 Document: 62 Page: 1 Filed: 01/04/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
COMCAST CABLE COMMUNICATIONS, LLC,
PROMPTU SYSTEMS CORPORATION,
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
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.
Case: 19-1947 Document: 62 Page: 2 Filed: 01/04/2021
2 COMCAST CABLE COMMUNICATIONS v. PROMPTU SYSTEMS
JACOB ADAM SCHROEDER, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Palo Alto, CA, for appel-
lee. Also represented by JOSHUA GOLDBERG, Washington,
DANIEL KAZHDAN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for interve-
nor. 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 in-
ter partes review final-written decisions, 1 in which the Pa-
tent Trial and Appeal Board held that Comcast failed to
prove claims 1–7, 17–24, 33–35, 37, and 40–41 (the chal-
lenged claims) of U.S. Patent No. 7,260,538 would have
been obvious. For the following reasons, we affirm.
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 com-
bination with U.S. Patent No. 5,774,859 (Houser). Review
was instituted, and the Board issued a final-written deci-
sion 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 dif-
ferentiate 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
Case: 19-1947 Document: 62 Page: 3 Filed: 01/04/2021
COMCAST CABLE COMMUNICATIONS v. PROMPTU SYSTEMS 3
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 obvi-
ous over Julia alone or Murdock alone. Likewise, because
the Board found no motivation to combine Houser with ei-
ther 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 corre-
sponding to the recited function for one of the claim’s ele-
ments. Comcast appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
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 func-
tion” as overly broad and by finding no motivation to com-
bine Houser with the primary references. We do not agree.
“We review the Board’s constructions based on intrin-
sic evidence de novo and its factual findings based on ex-
trinsic 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 No-
vember 13, 2018, we construe claims in the unexpired ’538
patent according to their “broadest reasonable interpreta-
tion in light of the specification.” 37 C.F.R. § 42.100(b)
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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4 COMCAST CABLE COMMUNICATIONS v. PROMPTU SYSTEMS
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, un-
ambiguously limits the claimed command function to func-
tions 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 occur-
ring, 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 pa-
tent at 7:10–12 (“The command functions are used to con-
trol 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 can-
not support functions that merely cause an action. See
Hill-Rom Servs., Inc. v. Stryker Corp.,
755 F.3d 1367
(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.
“The Board’s motivation to combine finding is reviewed
for substantial evidence.” Outdry Techs. Corp. v. Geox
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).
Case: 19-1947 Document: 62 Page: 5 Filed: 01/04/2021
COMCAST CABLE COMMUNICATIONS v. PROMPTU SYSTEMS 5
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 flex-
ible test, as Comcast argues. See KSR Int’l Co. v. Teleflex
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
(Fed. Cir. 2019) (“[A] conclusory assertion with no explana-
tion 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) re-
cited boilerplate legal conclusions untethered to any claim
language. We hold those findings are supported by sub-
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 deci-
sions, we affirm.
3 We need not reach Comcast’s arguments regarding