Paper 9
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: January 6, 2015
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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 IPR2014-01104
`Patent 5,414,761
`____________
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Petitioner, Universal Remote Control, Inc., filed a Petition requesting
`
`an inter partes review of claims 1, 9, 10, and 14–17 of U.S. Patent No.
`5,414,761 (Ex. 1001, “the ’761 patent”) under 35 U.S.C. §§ 311–319. Paper
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: January 6, 2015
`
`
`
`
`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 IPR2014-01104
`Patent 5,414,761
`____________
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Petitioner, Universal Remote Control, Inc., filed a Petition requesting
`
`an inter partes review of claims 1, 9, 10, and 14–17 of U.S. Patent No.
`5,414,761 (Ex. 1001, “the ’761 patent”) under 35 U.S.C. §§ 311–319. Paper
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`IPR2014-01104
`Patent 5,414,761
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`1 (“Petition” or “Pet.”). Patent Owner, Universal Electronics, Inc., filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314. Section 314 provides that an inter partes review
`may not be instituted “unless . . . the information presented in the
`petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`For the reasons that follow, we institute an inter partes review of
`
`claims 1, 9, 10, and 14–17 of the ’761 patent.
`
`A. Related Proceedings
`According to Petitioner, the ’761 patent is involved in the following
`lawsuit: Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
`SACV 13-00984 AG (JPRx) (C.D. Cal.). Pet. 1.
`
`B. The ’761 Patent
`The ’761 patent relates to a remote control that includes input
`circuitry with a set of keys or pushbuttons for inputting commands to the
`remote control, infrared signal output circuitry for supplying an infrared
`signal to a controlled device, and a central processing unit (CPU) coupled to
`the input circuitry. Ex. 1001, Abstract. Memory is coupled to the CPU,
`which stores code data for generating infrared light to control an apparatus.
`Id. Memory may be updated from outside the remote control through data
`coupling circuitry and structure coupled to the CPU. Id.
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`Figure 20 of the ’761 patent is reproduced below.
`
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`Figure 20 is a fragmentary perspective view of a connector having
`conversion circuitry and a battery case cover by which data can be input into
`the RAM of the operating circuitry of a remote control device. Ex. 1001,
`4:28–33. Signal coupling and converting assembly 206 includes connector
`assembly 207, cable 208, and cover plate 210 for battery compartment 45
`(Fig. 7). Cover plate 210 has three pins 212, 214, and 216 on its underside,
`which are positioned to connect with three serial ports 1, 2, and 3 (Fig. 7) of
`the control device. Id. at 19:43–49. Pins 212, 214, and 216 are connected
`by three wire conductors 224, 226, and 228 in cable 208 to connector
`assembly 207, which contains conversion circuitry 230. Conversion
`circuitry 230 (Figs. 21, 22) enables using some of the nine sockets 250 of
`connector assembly 207 for communication with serial ports 1, 2, and 3 via
`pins 212, 214, and 216. Id. at 19:49–59.
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`C. Illustrative Claim
`Each of claims 1, 14, 15, 16, and 17 is independent. Claim 1,
`reproduced below, is illustrative.
`1. A remote control system with data coupling including:
`a remote control comprising input means including a set of keys
`or pushbuttons for inputting commands into the remote control,
`infrared signal output means including IR lamp driver means
`for supplying an infrared signal to a controlled device, a central
`processing unit (CPU) coupled to the input means and to the
`signal output means, memory means coupled to the CPU and
`data coupling means including receiving means coupled to the
`CPU for enabling at least one of (a) instruction codes or
`(b) code data for creating appropriate IR lamp driver
`instructions for causing the infrared signal output means to emit
`infrared signals which will cause specific functions to occur in a
`specific controlled device, for operating a variety of devices to
`be controlled, to be supplied from outside the remote control
`through the receiving means directly to the CPU for direct entry
`to the memory to enable the remote control to control various
`devices to be controlled upon the inputting of commands to the
`keys of the input means and a data transmission system
`including coupling means for coupling the receiving means to a
`computer, directly, through a telephone line, through a modem
`and a telephone line, or through decoding means and a
`television set which receives a television signal containing at
`least one of the instruction codes or the code data.
`
`Id. at 22:51–23:9.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability under
`35 U.S.C. § 103(a) against claims 1, 9, 10, and 14–17:
`
`References
`
`
`
`
`Challenged Claims
`
`Wozniak,1 CS-232 Manual,2 and
`Hastreiter3
`Ciarcia4 and Hastreiter
`
`1, 9, 10, and 14–17
`
`1, 9, 10, and 14–17
`
`
`
`II. ANALYSIS
`A. Claim Interpretation
`The ’761 patent has expired and, thus, cannot be amended. For claims
`of an expired patent, the Board’s claim interpretation is similar to that of a
`district court. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). “In
`determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17
`(Fed. Cir. 2005) (en banc)). However, 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).
`
`1 U.S. Patent No. 4,918,439, issued Apr. 17, 1990 (Ex. 1007).
`2 R. Karr, D. Sokol, & T.J. Schmidt, CORE Serial Interface (CS-232)
`Manual (rev. 3.0, 1988). (Ex. 1010).
`3 U.S. Patent No. 4,667,181, issued May 19, 1987 (Ex. 1008).
`4 Steve Ciarcia, Build a Trainable Infrared Master Controller, BYTE, Mar.
`1987, at 113. (Ex. 1009).
`
`5
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`For claim limitations that are construed in accordance with 35 U.S.C.
`§ 112, sixth paragraph, the United States Court of Appeals for the Federal
`Circuit has explained:
`The first step in construing a means-plus-function
`limitation is to identify the function explicitly recited in the
`claim. The next step is to identify the corresponding structure
`set forth in the written description that performs the particular
`function set forth in the claim. Section 112 paragraph 6 does
`not “permit incorporation of structure from the written
`description beyond that necessary to perform the claimed
`function.” Structural features that do not actually perform the
`recited function do not constitute corresponding structure and
`thus do not serve as claim limitations.
`
`Asyst Techs, Inc. v. Empak, Inc., 268 F.3d 1364, 1369–70 (Fed. Cir. 2001)
`(citations omitted). The structure corresponding to a function set forth in a
`means-plus-function limitation actually must perform the recited function,
`not merely enable the pertinent structure to operate as intended. Id. at 1371.
`1. Data Coupling Means (Claim 1)
`Claim 1 recites “data coupling means including receiving means”
`coupled to the CPU “for enabling at least one of (a) instruction codes or
`(b) code data for creating appropriate IR lamp driver instructions . . . to be
`supplied from outside the remote control through the receiving means
`directly to the CPU for direct entry to the memory.” The parties agree that
`35 U.S.C. § 112, sixth paragraph applies to the “data coupling means” term
`of claim 1.
`Petitioner submits that the ’761 patent discloses that the function
`associated with the “data coupling means” of claim 1 is performed by
`structure “that includes” a terminal (3) of a serial receiving port coupled
`directly to an input port (112) of CPU 56, as shown in Figure 9B and
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`described at column 9, lines 11 through 21 and 40 through 43. Pet. 16–17.
`Petitioner asserts, however, that the ’761 patent does not disclose any
`structure for receiving at least one of (a) instruction codes or (b) code data
`for creating appropriate IR lamp driver instructions, and directly entering
`such code data into the memory. Id. Patent Owner responds that the
`structure that performs the “data coupling means” function of claim 1 is “a
`terminal of a receiving port coupled to the CPU.” Prelim. Resp. 9.
`We are not persuaded by Petitioner’s argument that corresponding
`structure for the “data coupling means” must include software for
`programming the CPU to handle “instruction code” or “code data.” See
`Pet. 17. In particular, we are not persuaded that microprocessor instructions
`on how to recognize and interpret or process the instruction codes or code
`data are necessary to implement the claimed function. See Ex. 1013 ¶ 35
`(Declaration of Stephen D. Bristow). The function associated with the “data
`coupling means” in claim 1 is enabling at least one of (a) instruction codes
`or (b) code data to be supplied from outside the remote control through the
`receiving means directly to the CPU for direct entry to the memory. The
`claim does not recite recognizing, interpreting, or processing the data. Thus,
`on this record, Petitioner has not established that the specification lacks the
`structure required for the claimed “data coupling means.”
`Patent Owner argues that Petitioner has submitted an unduly narrow
`construction for the “data coupling means.” Prelim. Resp. 8–9. Even
`assuming Petitioner has an unduly narrow construction for the “data
`coupling means,” we are persuaded that it has identified the requisite
`structure in the prior art under such construction. For purposes of this
`decision, we need not further construe the term.
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`2. Data Coupling Means for Periodically Coupling Said Computer
`to Said Remote Control (Claims 14–17)
`Independent claims 14 and 15 each recite “data coupling means for
`periodically coupling said computer to said remote control for receiving
`from said computer memory and inputting into said memory means of said
`remote control at least one of (a) said instruction codes or (b) said code data
`for creating appropriate IR lamp driver instructions.” Independent claims 16
`and 17 each recite “data coupling means for periodically coupling said
`computer to said remote control for receiving from said computer memory
`and inputting into said memory means of said remote control said instruction
`codes.” The parties agree that 35 U.S.C. § 112, sixth paragraph applies to
`the “data coupling means for periodically coupling” term of claims 14–17.
`Petitioner submits that the ’761 patent discloses that the function
`associated with the “data coupling means” of claims 14–17 is performed by
`structure “that includes” a terminal (3) of a serial receiving port coupled
`directly to an input port (112) of CPU 56, as shown in Figure 9B and
`described at column 9, lines 11 through 21 and 40 through 43. Pet. 18.
`Petitioner asserts, however, that the patent does not disclose any structure for
`“periodically coupling said computer to said remote control,” nor any
`structure “disclosed specifically” for receiving code data. Id. Patent Owner
`responds that the structure that performs the “periodically coupling” function
`of claim 1 is “a terminal of a receiving port coupled to an input port of the
`CPU.” Prelim. Resp. 13.
`Similar to our analysis with respect to claim 1, we are not persuaded
`by Petitioner’s argument that corresponding structure for the “data coupling
`means” must include software for programming the CPU to handle “code
`data.” See Pet. 18. Moreover, for purposes of this decision, we interpret the
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`language of “periodically” coupling as requiring a connection from the
`computer and remote control device that may be disconnected, as opposed to
`being a fixed, permanent connection.
`Patent Owner argues that Petitioner has submitted an unduly narrow
`construction for the “data coupling means.” Prelim. Resp. 12–13. Even
`assuming Petitioner has an unduly narrow construction for the “data
`coupling means,” we are persuaded that it has identified the requisite
`structure in the prior art under such construction. For purposes of this
`decision, we need not further construe the term.
`3. Further Limitations
`All of the claims further recite other means-plus-function limitations.
`For example, all of the claims recite “input means . . . for inputting
`commands to [the/said] remote control” and “infrared signal output means . .
`. for supplying an infrared signal to a controlled device.” With respect to the
`additional means-plus-function limitations, Patent Owner argues that
`Petitioner has submitted unduly narrow constructions for these limitations.
`Prelim. Resp. 4–7, 15–19.
`For purposes of this decision, we need not construe any further
`limitations of the claims. Even assuming Petitioner has an unduly narrow
`construction for the additional means-plus-function limitations, we are
`persuaded that it has identified the requisite structures in the prior art under
`such construction.
`B. Obviousness over Ciarcia and Hastreiter
`Petitioner contends that claims 1, 9, 10, and 14–17 are unpatentable
`under 35 U.S.C. § 103 based on Ciarcia and Hastreiter. To support its
`contention, Petitioner provides a detailed showing mapping limitations of
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`claims 1, 9, 10, and 14–17 of the ’761 patent to structures described by
`Ciarcia and Hastreiter. Pet. 48–58. Petitioner also cites the Declaration of
`Stephen D. Bristow for support. See Ex. 1013 ¶¶ 70–87.
`Ciarcia describes a remote control with a keypad for inputting
`commands into the remote control. Ex. 1009, 114.5 With respect to the
`claimed “data coupling means,” the present record supports the contention
`that programming and data in Ciarcia are transferred from a personal
`computer to the remote control device using three wires from an RS-232
`interface. “The serial connector is an RJ-11 telephone jack instead of the
`usual 25-pin DB-25 connector. Only three wires are required: data from the
`PC, data to the PC, and signal ground.” Id. at 119. We are persuaded, for
`purposes of this decision, that Ciarcia teaches the same, or at least
`equivalent, structure as that in the ’761 patent corresponding to the claimed
`“data coupling means.” See Pet. 51–53; Ex. 1013 ¶¶ 70–71, 79. Petitioner
`also has shown sufficiently that Ciarcia describes that the remote control
`includes a central processing unit (CPU) (Intel 8031 microprocessor, IC1),
`memory (RAM IC11) coupled to the CPU, and infrared LEDs that produce
`an IR signal to a controlled device including circuitry. Pet. 48–51; Ex. 1009,
`114–115.
`Petitioner relies on Hastreiter solely for its teachings with respect to a
`keyboard circuit that uses diodes between row and column lines of the
`keyboard, the same as that described in the ’761 patent. See, e.g., Ex. 1001,
`Fig. 9B; Ex. 1008, Figs. 1, 2. Patent Owner submits that the Petition does
`not provide any rational underpinning as to why one of ordinary skill in the
`
`
`5 We cite to the reference’s magazine page numbers rather than the Exhibit
`page numbers.
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`art would have been motivated to combine the keyboard of Hastreiter with
`the remote control of Ciarcia. Prelim. Resp. 59. Patent Owner’s argument is
`unpersuasive. Petitioner points to teachings in Hastreiter that the keyboard
`design can be used to minimize the required number of interconnections
`with a microprocessor or other apparatus with which a keyboard is used.
`Pet. 49–50; Ex. 1008, 1:5–11. We are persuaded that Petitioner has
`identified sufficient motivation from the prior art for the proposed
`combination of Ciarcia and Hastreiter.
`We have reviewed the proposed ground of obviousness over Ciarcia
`and Hastreiter against claims 1, 9, 10, and 14–17, and we are persuaded that
`Petitioner has met the threshold of 35 U.S.C. § 314(a). See Pet. 48–58. On
`the present record, we find that Petitioner has established a reasonable
`likelihood that Petitioner would prevail in its challenge of claims 1, 9, 10,
`and 14–17 on this ground.
`C. Obviousness over Wozniak, CS-232 Manual, and Hastreiter
`In light of the ground on which we have instituted review of claims 1,
`9, 10, and 14–17, we do not institute review based on the asserted ground
`that claims 1, 9, 10, and 14–17 are unpatentable under 35 U.S.C. § 103 over
`Wozniak, CS-232 Manual, and Hastreiter. See 37 C.F.R. § 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 1, 9, 10, and 14–17 of the ’761 patent are unpatentable.
`At this stage of the proceeding, the Board has not made a final determination
`with respect to the patentability of the challenged claims.
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`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that an inter partes review is instituted as to claims 1, 9,
`10, and 14–17 of the ’761 patent on the obviousness ground based on
`Ciarcia and Hastreiter;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’761 patent is instituted with trial commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is given of the institution of the trial; and
`FURTHER ORDERED that the trial is limited to the ground identified
`immediately above, and no other ground is authorized.
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`IPR2014-01104
`Patent 5,414,761
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`For Petitioner:
`
`Douglas A. Miro
`Keith Barkaus
`OSTROLENK FABER LLP
`dmiro@ostrolenk.com
`kbarkaus@ostrolenk.com
`
`Peter Kang
`Theodore Chandler
`Ferenc Pazmandi
`SIDLEY AUSTIN LLP
`pkang@sidley.com
`tchandler@sidley.com
`fpazmandi@sidley.com
`
`For Patent Owner:
`
`Eric Maiers
`Michael Nicodema
`James Lukas
`Robbie Harmer
`GREENBERG TRAURIG, LLP
`maierse@gtlaw.com
`nicodemam@gtlaw.com
`lukasj@gtlaw.com
`harmer@gtlaw.com
`
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