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        NOTE: This disposition is nonprecedential.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,
                 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.
Case: 19-1947    Document: 62      Page: 2    Filed: 01/04/2021




2        COMCAST CABLE COMMUNICATIONS     v. PROMPTU SYSTEMS
                                                CORPORATION




     JACOB ADAM SCHROEDER, Finnegan, Henderson,
 Farabow, Garrett & Dunner, LLP, Palo Alto, CA, for appel-
 lee. Also represented by JOSHUA GOLDBERG, Washington,
 DC.

     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.
                        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 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
 CORPORATION


 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).
                        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 func-
 tion” as overly broad and by finding no motivation to com-
 bine Houser with the primary references. We do not agree.
                              I
     “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)
 (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.
Case: 19-1947     Document: 62       Page: 4    Filed: 01/04/2021




4       COMCAST CABLE COMMUNICATIONS        v. PROMPTU SYSTEMS
                                                   CORPORATION


 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

, 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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 COMCAST CABLE COMMUNICATIONS      v. PROMPTU SYSTEMS        5
 CORPORATION


      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
 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 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-
 stantial 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 deci-
 sions, we affirm.
                         AFFIRMED




     3  We need not reach Comcast’s arguments regarding
 claim 18.