throbber
Paper No. 8
`Trials@uspto.gov
`571-272-7822
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`Date Entered: August 19, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIVERSAL REMOTE CONTROL, INC.
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00152
`Patent 5,614,906
`____________
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and SCOTT R.
`BOALICK, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2013-00152
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`I. BACKGROUND
`Universal Remote Control, Inc. (Petitioner) requests inter partes review of
`
`claims 1, 10, 12, and 16 of US Patent 5,614,906 under 35 U.S.C. §§ 311 et seq.
`Paper No. 2 (“Pet.”). Universal Electronics, Inc. (Patent Owner) submitted a
`preliminary response under 37 C.F.R. § 42.107(b) on May 22, 2013. Paper No. 7
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides:
`
`THRESHOLD -- The Director may not authorize an inter partes review to be
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`instituted unless the Director determines that the information presented in
`
`the petition filed under section 311 and any response filed under section 313
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`shows that there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least 1 of the claims challenged in the petition.
`
`For the reasons that follow, the petition is denied.
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`
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`A. The Challenged Patent
`The '906 patent (Ex. 1001) describes a remote control device (Fig. 1) having
`remote control command sets, each set consisting of commands for operating a
`different remotely controllable device. In a remote control device programming
`(select) procedure, a command from each set, having an effect that is observable in
`the remotely controlled device -- such as a command for “power off” -- is assigned
`to a corresponding one of user actuated keys. The user presses the keys one by one
`until the user observes the desired effect on the remotely controlled device. The
`user then signals the remote control device to exit the select procedure. The
`remote control device sets the remote control to transmit future commands from
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`the command set that includes the last transmitted effects observable command
`having the observed desired effect. '906 patent Abstract; col. 6, ll. 20-37, 50-57.
`
`
`B. Illustrative Claims
`1. A method for selecting an appropriate one of a plurality of
`command sets stored in a remote control having a plurality of
`assignable user actuated switches or keys for controlling a remotely
`controllable electronic device, comprising the steps of:
`
`
`
`(a) assigning an effects observable command from each of said
`plurality of command sets to one of said plurality of assignable user
`actuated switches or keys, each assigned, effects observable command
`to be transmitted when the corresponding one of the assignable user
`actuated switches or keys is actuated;
`
`
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`(b) actuating sequentially and individually each one of the
`plurality of assignable user actuated switches or keys, to individually
`transmit each assigned effects observable command until the proper
`effect is observed;
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`
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`(c) halting the actuating of the plurality of assignable user
`actuated switches or keys; and
`
`(d) setting the remote control to transmit future remote control
`commands from the command set containing the last transmitted
`effects observable command.
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`
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`16. An apparatus for selecting an appropriate one of a plurality
`of command sets stored in a remote control having a plurality of
`assignable user actuated switches or keys for controlling a remotely
`controllable electronic device, comprising:
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`
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`means for assigning an effects observable command from each
`of the plurality of command sets to one of said plurality of assignable
`user actuated switches or keys;
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`means for transmitting said effects observable command when
`the corresponding one of said plurality of assignable user actuated
`switches or keys is actuated;
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`means for indicating the halting of the actuation of the plurality
`of assignable user actuated switches or keys; and
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`means for setting the remote control to transmit future remote
`control commands from the command set containing the last
`transmitted effects observable command.
`
`C. Related Proceedings
`The '906 patent is involved in litigation styled Universal Electronics Inc., v.
`Universal Remote Control, Inc., Case No. SACV 12-00329 AG (JPRx) (C.D. Cal.),
`filed on March 2, 2012. Pet. 1. The Petitioner has filed petitions for inter partes
`review against two other patents involved in the litigation: US 6,587,067
`(IPR2013-00127) and US 5,414,426 (IPR2013-00168).
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`D. Asserted Grounds of Unpatentability
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`Petitioner asserts the following ground of unpatentability under
`35 U.S.C. § 102(b):
`I. Claims 1 and 16 over Telefunken (DE 3313493 A1; Oct. 18, 1984)1
`(Ex. 1003).
`Petitioner asserts the following grounds of unpatentability under
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`35 U.S.C. § 103(a):
`II. Claims 10 and 12 over Telefunken and Casio (JP H6-311567; Nov. 4,
`1994) (Ex. 1004);
`III. Claims 1 and 16 over Sony (EP 0 577 267 A1; Jan. 5, 1994) (Ex. 1005)
`and Telefunken;
`IV. Claims 10 and 12 over Sony, Telefunken, and Casio;
`V. Claims 1, 10, and 12 over GHV-300/GHV-5002 and MRH77003;
`VI. Claim 16 over GHV300/GHV-500, MRH7700, and Telefunken;
`VII. Claims 1, 10, and 12 over GHV-300/GHV-500, Pioneer4, and Casio;
`
`and
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`6.
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`VIII. Claim 16 over GHV-300/GHV-500, Pioneer, and Telefunken. Pet. 5-
`
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`1 An English translation accompanies each foreign-language publication.
`
`2 GHV 300 VHS VCR User Manual (Ex. 1006) and GH500 VHS VCR User
`Manual (Ex. 1007), both undated.
`
` 3
`
` Installation and Operation KI-1844A, MRH7700 IR Remote Control, Rauland-
`Borg Corp., May 1994 (Ex. 1009).
`
` 4
`
` Operating Instructions, Audio/Video Stereo Receiver VSX-5900S, Pioneer
`Corp., undated (Ex. 1010).
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`II. ANALYSIS
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`Claim Interpretation
`Consistent with the statute and the legislative history of the Leahy-Smith
`America Invents Act (AIA), the Board will construe the claims of an unexpired
`patent using the broadest reasonable interpretation. 37 CFR § 42.100(b); Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). The
`claim language should be read in light of the specification as it would be
`interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the broadest
`reasonable meaning to the claim language, taking into account any definitions
`presented in the specification. Id. (citing In re Bass, 314 F.3d 575, 577 (Fed. Cir.
`2002)).
`There is a “heavy presumption” that a claim term carries its ordinary and
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002). By “ordinary meaning” we are guided by, e.g., Biotec
`Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341,
`1349 (Fed. Cir. 2001) (finding no error in non-construction of “melting”); Mentor
`H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001)
`(finding no error in court’s refusal to construe “irrigating” and “frictional heat”).
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`I. Claim 1: “assigning an effects observable command from each of
`
`said plurality of command sets to one of said plurality of assignable user actuated
`switches or keys”
`Petitioner submits that the use of the word “one,” as opposed to “a
`respective one,” means that the claim fails to require a one-to-one correspondence
`between an effects observable command and a switch or key on the remote control
`device. Pet. 12-14. Patent Owner submits that both the language of the claim and
`the '906 patent’s disclosure require that an effects observable command from each
`of the command sets is assigned to a corresponding user actuated switch or key.
`Prelim. Resp. 3-9.
`Without deciding which party has the better position, for purposes of this
`decision we will adopt the broader of the readings with respect to the claimed
`“one” of the plurality of switches or keys. That is, we will presume that claim 1 is
`not limited to “assigning an effects observable command from each of said
`plurality of command sets to [a corresponding] one of said plurality of assignable
`user actuated switches or keys.” However, the step of “assigning an effects
`observable command” must be read together with the next step of the claim, which
`we now address.
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`
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`II. Claim 1: “actuating sequentially and individually each one of the
`plurality of assignable user actuated switches or keys, to individually transmit
`each assigned effects observable command until the proper effect is observed”
`Petitioner submits that the broadest reasonable interpretation of the claim
`phrase is “pushing switches or keys one at a time to transmit effects observable
`commands, the switches or keys being pushed until a user observable effect is
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`observed.” Pet. 15. Patent Owner responds that the claim phrase does not need
`additional construction and does not dispute Petitioner’s proposed construction.
`Prelim. Resp. 10.
`However, Petitioner’s proposed construction of the “actuating” step fails to
`account for which “effects observable” commands may be transmitted. Claim 1
`recites “assigning an effects observable command from each of said plurality of
`command sets to one of said plurality of assignable user actuated switches or
`keys,” with “each assigned, effects observable command to be transmitted when
`the corresponding one of the assignable user actuated switches or keys is actuated,”
`and “actuating sequentially and individually each one of the plurality of assignable
`user actuated switches or keys, to individually transmit each assigned effects
`observable command until the proper effect is observed” (emphasis added). The
`plain language of claim 1 thus requires that an (i.e., one) effects observable
`command is assigned from each of the plurality of command sets, with each
`assigned command to be transmitted when the corresponding switch or key is
`actuated, and each assigned command is individually transmitted upon actuating
`sequentially and individually each one of the plurality of assignable switches or
`keys (i.e., at least two keys are actuated, causing at least two corresponding
`assigned commands to be transmitted). We further note that the claim limits the
`sequential and individual actuation of the keys in that they are actuated until the
`proper effect is observed (e.g., a “power-off” command results in turning off a
`remote controllable device, such as a TV).
`The “assigning” and “actuating” steps of claim 1 together require that the
`same “effects observable command” from a command set (1) is assigned to one of
`the plurality of assignable user actuated switches and keys, (2) is to be transmitted
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`when the corresponding one of the switches or keys is actuated, and (3) is
`transmitted as a consequence of sequential and individual actuation of each of the
`plurality of assignable switches or keys, until the proper effect is observed. Our
`reading of the plain language of the claim is consistent with the disclosure of the
`'906 patent. In the preferred embodiment, a “power off” command is assigned not
`only to the “power” key but also to each of the numeric keys, such that each of the
`assignable user actuated keys corresponds to a “power off” signal that operates a
`particular remotely controlled device. '906 patent col. 6, ll. 31-37.
`
`Claim Interpretation -- Means Plus Function
`Section 112, paragraph six permits an element in a claim for a combination
`to be expressed as a means for performing a specified function without the recital
`of structure in support thereof, but with the provision that “such claim shall be
`construed to cover the corresponding structure, material, or acts described in the
`specification and equivalents thereof.” “[T]he corresponding structure for a § 112
`¶ 6 claim for a computer-implemented function is the algorithm disclosed in the
`specification.” Aristocrat Techs. Austl. Party. Ltd. vs. Int’l Game Tech., 521 F.3d
`1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241,
`1249 (Fed. Cir. 2005)).
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`
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`III. Claim 16: “means for assigning an effects observable command
`from each of the plurality of command sets to one of said plurality of assignable
`user actuated switches or keys”
`Petitioner and Patent Owner agree that the “means for assigning” clause of
`claim 16 must be construed in accordance with 35 U.S.C. § 112, sixth paragraph.
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`Petitioner submits that the “only structure arguably suggested to perform the
`function in the '906 patent is a general purpose microprocessor.” Pet. 15. Patent
`Owner responds that the “structure that performs the stated function is a
`microprocessor executing one or more of the algorithms described in col. 2, lines
`39-44; col. 5, lines 17-27; and col. 6, lines 3-19 of the '906 patent. (See also Ex.
`1001 at FIGS. 3A, 3C, 4:8-11, 44-47.).” Prelim. Resp. 11.
`While the '906 patent uses the words “assign” and “assigning,” we find that
`the patent does not describe an algorithm for “assigning” an effects observable
`command as recited in claim 16. We are mindful that describing an algorithm to
`the satisfaction of one of ordinary skill in the art does not require, for example,
`detailed disclosure in a step-by-step flowchart. See, e.g., Finisar Corp. v. The
`DirectTV Group, 523 F.3d 1323, 1340 (Fed. Cir. 2008) (“the patent must disclose .
`. . enough of an algorithm to provide the necessary structure under § 112, ¶ 6,”
`which can be expressed in any understandable terms (e.g., a mathematical formula,
`in prose, or as a flowchart)). The '906 patent, however, does not describe, to any
`appreciable extent, an algorithm that corresponds to the function of the claimed
`“means for assigning.” As an example, Figure 3C of the '906 patent is reproduced
`below.
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`Figure 3C is said to depict a portion of a flow chart that provides instructions
`for assisting in the control of the remote control, with emphasis on selecting a
`remote control command set from a group of multiple command sets stored in the
`remote control. '906 patent col. 3, ll. 39-44. However, the remainder of the '906
`patent provides no more detail with respect to the “assigning” of an effects
`observable command from each of the command sets than does Figure 3C. As
`shown in the Figure, the patent merely uses the word “assign,” which may
`correspond to the function of the claimed “means for assigning” but does not serve
`to describe an algorithm by which the appropriate effects observable commands
`are “assigned.” The patent “simply describes the function to be performed, not the
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`algorithm by which it is performed.” Aristocrat, 521 F.3d at 1334. There is thus
`no disclosed structure that includes an algorithm that may correspond to the
`claimed function of “assigning an effects observable command from each of the
`plurality of command sets to one of said plurality of assignable user actuated
`switches or keys.”
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`IV. Claim 16: “means for indicating the halting of the actuation of the
`plurality of assignable user actuated switches or keys”
`Petitioner and Patent Owner agree that the “means for indicating” clause of
`claim 16 must be construed in accordance with 35 U.S.C. § 112, sixth paragraph.
`Petitioner contends there is no structure suggested in the '906 patent to perform the
`stated function. Pet. 16. Patent Owner responds that the structure that performs
`the claimed function “is a microprocessor executing one or more of the algorithms
`described in col. 2, lines 49-51; col. 6, lines 51-58,” with further reference to the
`'906 patent at Figure 3D and column 4, lines 8-11 and 44-47. Prelim. Resp. 12.
`The '906 patent’s written description does use the word “indicating.”
`“Typically the user exits the setup procedure when the user observes the desired
`effect on the device to be controlled by the remote control 10, indicating that a
`compatible command set has been located.” '906 patent col. 6, ll. 54-57 (italic
`emphasis added). The patent thus describes that the user exits the setup procedure
`upon an indication (i.e., the desired effect) to the user that a compatible command
`set has been located. If exiting the setup procedure “indicates” anything to the
`remote control device, the indication is to select the current command set. We find
`no corresponding structure (e.g., a microprocessor executing one or more
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`algorithms) that may perform the claimed function of “indicating the halting of the
`actuation of the plurality of assignable user actuated switches or keys.”
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`V. Claim 16: “means for setting the remote control to transmit future
`remote control commands from the command set containing the last transmitted
`effects observable command”
`Petitioner and Patent Owner agree that the “means for setting” clause of
`claim 16 must be construed in accordance with 35 U.S.C. § 112, sixth paragraph.
`Petitioner contends there is no structure suggested in the '906 patent to perform the
`claimed function. Pet. 17. Patent Owner responds that the corresponding structure
`is described in column 2, lines 49-53 and column 6, lines 51-58, with further
`reference to Figure 3D and column 4, lines 8-11 and 44-47. Prelim. Resp. 13.
`While the '906 patent uses different forms of the word “setting,” such as
`“set” and “sets,” we find no corresponding structure for the claimed function of
`“setting the remote control to transmit future remote control commands from the
`command set containing the last transmitted effects observable command.” The
`patent describes “setting” the remote control as claimed but does not describe any
`structure (e.g., a microprocessor executing one or more algorithms) capable of
`performing the claimed function. In particular, we do not find any description of
`an algorithm for setting the remote control as claimed.
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`Claim 1 -- Anticipation by Telefunken (Ex. 1003)
`Petitioner contends that Telefunken anticipates the method of claim 1.
`Figure 3 of Telefunken is reproduced (from Ex. 1003) below.
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`Telefunken’s Figure 3 is said to depict the organization of a code memory
`table for a remote control unit for a video recording device. Telefunken at 7 (Ex.
`1003 at 7).
`An annotated version of Telefunken’s Figure 3 (from Ex. 1003) is
`reproduced below.
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`We have annotated Figure 3 to illustrate the exemplary programming of the
`remote control unit as described by Telefunken. As shown in the annotated
`version of the Figure, a start-up phase of operation commences with (1) actuation
`of the push button “PLAY.” The signals s (PLAY), g (PLAY), and h (PLAY)
`automatically and sequentially are generated and sent to the device to be
`controlled. If the user immediately releases the PLAY button after h (PLAY) is
`sent to the controlled device, the remote control unit registers the signal “h
`(PLAY)” as a remote control signal that triggers the function “PLAY” on the
`device to be controlled. However, there may be ambiguities in that “h (PLAY)”
`might also serve as a “PLAY” signal for other devices. For example, as depicted
`in Figure 3, a PLAY signal for an “h” type device might be identical, effectively,
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`to the PLAY signal for a “z” type device and an “f” type device. The remote
`control device consults a table for such ambiguities, with the result that when, in a
`second step (2), the user actuates the “STOP” button, the signals h (STOP), z
`(STOP), and f (STOP) are arranged to be transmitted in sequence. In the event that
`the user immediately releases the “STOP” button after the transmission of “z
`(STOP),” the device to be controlled is considered to be uniquely identified as
`responding to “z” control signals. That is, only the control signals specified in
`column “z” are used for controlling the device. Telefunken at 8-9.
`Petitioner submits, inter alia, that Telefunken describes assigning an effects
`observable command from each of the plurality of command sets to one of the
`plurality of assignable user actuated switches or keys in accordance with claim 1,
`“e.g., to one button, the ‘PLAY’ button.” Pet. 32. Petitioner further submits that
`Telefunken describes actuating, sequentially and individually, each one of the
`plurality of assignable user actuated switches or keys -- “e.g., ‘different stored
`codes to be sequentially tried out,’ ‘PLAY’ button followed by ‘STOP’ button.”
`Id.
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`However, as we have noted in the claim interpretation section that addresses
`the limitations of claim 1, supra, proper interpretation requires that the same
`“effects observable command” from a command set (1) is assigned to one of the
`plurality of assignable user actuated switches and keys, (2) is to be transmitted
`when the corresponding one of the switches or keys is actuated, and (3) is to be
`transmitted as a consequence of sequential and individual actuation of each of the
`plurality of assignable switches or keys, until the proper effect is observed.
`Petitioner’s mapping of the limitations of claim 1 to the elements in Telefunken
`fails at least for the reason that Telefunken describes transmitting a different type
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`of effects observable command upon actuation of the second button in the
`sequence. In the method described by Telefunken, as Petitioner seems to
`acknowledge (Pet. 32), one button is actuated for a PLAY command, but the
`second button in the sequence results in transmission of a STOP command.
`“[A]bsence from the reference of any claimed element negates anticipation.”
`Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986)
`(citation omitted), overruled on other grounds by Knorr-Bremse Systeme Fuer
`Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004). Petitioner
`has failed to identify any disclosure in Telefunken that meets all the requirements
`of claim 1. We conclude that Petitioner has not demonstrated a reasonable
`likelihood that claim 1 is unpatentable for being anticipated by Telefunken.
`
`Claim 1 -- Obviousness
`As with the application of Telefunken to claim 1 of the '906 patent, the
`Petition’s discussion of the asserted grounds of obviousness with respect to claim 1
`over the submitted prior art does not address all the actual requirements of the
`claim. Nor does the Herr Declaration (Ex. 1017) address all the actual
`requirements of claim 1. In short, the allegations fail to “specify where each
`element of the claim is found.” 37 C.F.R. § 42.104(b)(4).
`Petitioner submits that claim 1 is unpatentable over the combination of Sony
`and Telefunken. However, critical limitations of claim 1 are alleged to be taught
`by Telefunken (see, e.g., Pet. 38-39). Petitioner has not demonstrated that
`Telefunken teaches the critical limitations of claim 1 for the reasons set forth in our
`prior discussion of anticipation. Moreover, while Sony (Ex. 1005) might teach a
`one-to-one correspondence between an effects observable command and a user
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`actuated key (e.g., col. 5, ll. 39-47), Petitioner has not identified any combination
`of Telefunken and Sony that might demonstrate the obviousness of all that claim 1
`requires with respect to the same effects observable command.
`Petitioner also offers the GHV-300 and GHV-500 references as base
`references in two grounds of unpatentablity asserted against claim 1. The GHV
`references, which are substantially identical in relevant part, describe a TV remote
`control whereby in a code matching sequence the user presses a numeric key
`(e.g., 1) along with the Power button, then presses the Power button to see if the
`TV turns off. If not, the process is repeated with the Power button and a next
`numeric key (e.g., 2) until the proper matching code is found. E.g., GHV-300 at 9
`(Ex. 1006 at 10). The MRH7700 reference, which Petitioner offers in combination
`with the GHV references, describes identifying an effective command set by
`entering a three-digit numeric code, whereby if the code matches the TV, the TV
`will turn off. MRH7700 at 7 (Ex. 1009 at 7). The references thus teach two
`different ways of matching a remote control command set with a remote controlled
`device. Petitioner has not identified any combination of teachings that might
`demonstrate the obviousness of the same “effects observable command” from a
`command set (1) being assigned to one of the plurality of assignable user actuated
`switches and keys, (2) further is to be transmitted when the corresponding one of
`the switches or keys is actuated, and (3) is to be transmitted as a consequence of
`sequential and individual actuation of each of the plurality of assignable switches
`or keys, until the proper effect is observed.5
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`5 The parties dispute whether the GHV publications are prior art. We need not
`reach the issue because, even with the presumption that the publications represent
`prior art vis-à-vis the '906 patent, Petitioner’s assertion of unpatentability fails.
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`The GHV references also are offered against claim 1 in combination with
`Pioneer and Casio. Pioneer describes identifying a proper preset command set by
`pressing a remote control mode button (VCR1, VCR2, or TV), pressing next one
`of 12 buttons, and then determining whether the component can be operated by the
`selected preset code. Pioneer at 39 (Ex. 1010 at 39). Casio describes a remote
`control setting mode whereby each time a Power key is operated, power codes of
`sequentially different manufacturers are transmitted. Casio at 14 (unnumbered
`page) (Ex. 1004 at 14). As with the other proposed grounds against claim 1,
`Petitioner has not considered all the requirements of the claim with respect to the
`“effects observable command” and thus has not shown any combination of
`teachings in the presumed prior art references that might demonstrate the
`obviousness of the subject matter of claim 1.
`In view of the foregoing, we conclude that Petitioner has not demonstrated a
`reasonable likelihood that claim 1 is unpatentable for obviousness over the applied
`prior art.
`
`Claims 10 and 12 -- Obviousness
`Claims 10 and 12 depend from claim 1. Petitioner asserts grounds of
`obviousness based on the combinations of: (1) Telefunken and Casio; (2) Sony,
`Telefunken, and Casio; (3) GHV-300/GHV-500 and MRH7700; and (4) GHV-
`300/GHV-500, Pioneer, and Casio. Because the grounds of unpatentability as
`asserted in the Petition do not remedy the deficiencies in the attempt to
`demonstrate the obviousness of base claim 1, we conclude that Petitioner has not
`demonstrated a reasonable likelihood that claims 10 and 12 are unpatentable for
`obviousness over the applied prior art.
`
`19
`
`
`

`
`IPR2013-00152
`Patent 5,614,906
`
`
`
`
`Claim 16
`The Petition applies Telefunken and various publications (Pet. 5-6) against
`claim 16 as being anticipated or obvious over the prior art. However, Petitioner
`construes each of the “means for assigning,” “means for indicating,” and “means
`for setting” limitations of claim 16 both as a “general purpose microprocessor”
`(Pet. 15-17) and as a microprocessor executing (non-existent) instructions in the
`patent drawings (id. at 33-35), neither of which is an acceptable interpretation of
`the limitations under 35 U.S.C. § 112, sixth paragraph.6
`As indicated in the claim interpretation section, supra, we are unable to
`arrive at an interpretation of the requirements of claim 16 due to the lack of
`disclosed structure corresponding to the recited “means for assigning,” “means for
`indicating,” and “means for setting.” A lack of sufficient disclosure of structure
`under 35 U.S.C. § 112, sixth paragraph renders a claim indefinite, and thus not
`amenable to construction. See In re Aoyama, 656 F.3d 1293, 1298 (Fed Cir. 2011)
`(quoting Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir.
`2010) (“If a claim is indefinite, the claim, by definition, cannot be construed.”). In
`the circumstances of this case, we conclude that the information presented in the
`Petition and the Preliminary Response does not show there is a reasonable
`likelihood that Petitioner would prevail in its challenge of claim 16 in an inter
`partes review.
`
`
`
`
`
`
`6 In a Markman Order in the related district court litigation, the District Court
`found there was no corresponding structure for the claimed “means for assigning,”
`“means for indicating,” and “means for setting.” Consequently, the District Court
`held that claim 16 of the '906 patent is indefinite as a matter of law. Ex. 1016 at
`20-26.
`
`
`20
`
`
`

`
`IPR2013-00152
`Patent 5,614,906
`
`
`
`
`
`
`
`
`
`III. CONCLUSION
`Upon consideration of the Petition and Preliminary Response, we are not
`persuaded that there is a reasonable likelihood that Petitioner would prevail on at
`least one alleged ground of unpatentability with respect to claims 1, 10, 12 and 16
`of the '906 patent. We, therefore, deny the petition for inter partes review and
`decline to institute trial on any of the asserted grounds as to any of the challenged
`claims. 37 C.F.R. § 42.108.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the petition is denied as to all challenged claims and no
`
`trial is instituted.
`
`
`
`21
`
`
`

`
`
`
`
`
`22
`
`
`IPR2013-00152
`Patent 5,614,906
`
`
`
`For Patent Owner:
`Timothy E. Bianchi
`tbianchi@slwip.com
`
`Thomas C. Reynolds
`treynolds@slwip.com
`
`
`For Petitioner:
`
`Michael A. Nicodema
`chiipmail@gtlaw.com
`
`Gary R. Jarosik
`jarosikg@gtlaw.com
`
`Eric J. Maiers
`maierse@gtlaw.com

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