Paper 48
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: December 15, 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.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I. INTRODUCTION
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`
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`Petitioner, Universal Remote Control, Inc., filed a Petition requesting
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`an inter partes review of claims 1, 9, 10, and 14–17 of U.S. Patent No.
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`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
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`
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`Preliminary Response. Paper 8 (“Prelim. Resp.”). Upon consideration of
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`the Petition and Preliminary Response, on January 6, 2015, we instituted an
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`inter partes review of claims 1, 9, 10, and 14–17 on one ground of
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`unpatentability, pursuant to 35 U.S.C. § 314. Paper 9 (“Dec.”).
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`Subsequent to institution, Patent Owner filed a Patent Owner
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`Response in both unredacted (confidential) and revised redacted forms
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`(Papers 14 and 44 (“PO Resp.”)), along with a Motion to Seal (Paper 15).
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`Petitioner filed a Reply in both unredacted (confidential) and revised
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`redacted forms (Papers 21 and 45 (“Pet. Reply”)), along with a Motion to
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`Seal (Paper 22).
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`Petitioner filed a Motion to Exclude (Paper 28; “Pet. Mot. to
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`Exclude”) certain portions of Exhibits 1053 and 1054. Patent Owner filed
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`an Opposition to the Motion to Exclude (Paper 35; “PO Exclude Opp.”), and
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`Petitioner filed a Reply (Paper 37; “Pet. Exclude Reply”).
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`Patent Owner filed a Motion to Exclude (Paper 29; “PO Mot. to
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`Exclude”) Exhibit 1043, and portions of Petitioner’s Reply that rely on
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`Exhibit 1043. Petitioner filed an Opposition to the Motion to Exclude
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`(Paper 33; “Pet. Exclude Opp.”), and Patent Owner filed a Reply (Paper 36;
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`“PO Exclude Reply”). Patent Owner filed a Motion for Observations (Paper
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`30) and Petitioner filed a Response to the Observations (Paper 34).
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`An oral hearing was held on August 19, 2015, and a transcript of the
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`hearing is included in the record (Paper 47; “Tr.”).
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`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
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`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`IPR2014-01104
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`For the reasons that follow, we determine that Petitioner has shown by
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`a preponderance of the evidence that claims 1, 9, 10, 14, and 15 of the ’761
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`patent are unpatentable. Petitioner, however, has not shown by a
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`preponderance of the evidence that claims 16 and 17 are unpatentable.
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`A. Related Proceedings
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`According to the parties, the ’761 patent is involved in the following
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`lawsuit: Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
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`SACV 13-00984 AG (JPRx) (C.D. Cal.). Pet. 1; Paper 4.
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`B. The ’761 Patent
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`The ’761 patent relates to a remote control that includes input
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`circuitry with a set of keys or pushbuttons for inputting commands to the
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`remote control, infrared signal output circuitry for supplying an infrared
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`signal to a controlled device, and a central processing unit (CPU) coupled to
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`the input circuitry. Ex. 1001, Abstract, Fig. 8, Fig. 9B. Memory is coupled
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`to the CPU, which stores code data for generating infrared light to control an
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`apparatus. Id. Memory may be updated from outside the remote control
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`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
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`conversion circuitry and a battery case cover by which data can be input into
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`the RAM of the operating circuitry of a remote control device. Ex. 1001,
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`4:28–33. Signal coupling and converting assembly 206 includes connector
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`assembly 207, cable 208, and cover plate 210 for battery compartment 45
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`(Fig. 7). Cover plate 210 has three pins 212, 214, and 216 on its underside,
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`which are positioned to connect with three serial ports 1, 2, and 3 (Fig. 7) of
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`the remote control device. Id. at 19:43–49. Pins 212, 214, and 216 are
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`connected by three wire conductors 224, 226, and 228 in cable 208 to
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`connector assembly 207, which contains conversion circuitry 230.
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`Conversion circuitry 230 (Figs. 21, 22) enables using some of the nine
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`sockets 250 of connector assembly 207 for communication with serial ports
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`1, 2, and 3 via pins 212, 214, and 216. Id. at 19:49–59.
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`C. Illustrative Claim
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`
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`Each of claims 1, 14, 15, 16, and 17 is independent. Claim 1,
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`reproduced below, is illustrative.
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`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.
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`Id. at 22:51–23:9.
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`D. Ground of Unpatentability
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`
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`We instituted trial based on the sole ground that claims 1, 9, 10, and
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`14–17 are unpatentable under 35 U.S.C. § 103(a) based on Ciarcia1 and
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`Hastreiter.2
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`II. ANALYSIS
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`A. Real Party-in-Interest
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`Petitioner certifies that Universal Remote Control, Inc. (“URC”) is the
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`real party-in-interest. Pet. 1. Patent Owner, however, contends that
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`Petitioner failed to also name Ohsung Electronics Co., Ltd., and/or Ohsung
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`Electronics U.S.A., Inc. (“Ohsung”), a supplier of products to Petitioner
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`(URC), as real parties-in-interest and that Petitioner’s failure to do so is fatal
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`to its Petition. PO Resp. 34–39.3
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`Section 312(a) of Title 35 of the United States Code provides that a
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`petition for inter partes review under 35 U.S.C. § 311 may be considered
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`only if, among other things, the petition identifies all real parties-in-interest.
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`35 U.S.C. § 312(a)(2). Whether a non-identified party is a real party-in-
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`interest to a proceeding is a highly fact-dependent question. Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial
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`Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “A
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`common consideration is whether the non-party exercised or could have
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`exercised control over a party’s participation in a proceeding.” Trial
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`Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). The
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`1 Steve Ciarcia, Build a Trainable Infrared Master Controller, BYTE, Mar.
`1987, at 113. (Ex. 1009).
`2 U.S. Patent No. 4,667,181, issued May 19, 1987 (Ex. 1008).
`3 Citations are to the revised redacted version of the PO Response (Paper
`44).
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`concept of control generally means that “it should be enough the nonparty
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`has the actual measure of control or opportunity to control that might
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`reasonably be expected between two formal coparties.” Id.
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`Patent Owner argues that Ohsung exercised or could have exercised
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`control over Petitioner’s participation in this proceeding based on the close
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`relationship between Petitioner and Ohsung. PO Resp. 36. In support of
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`that argument, Patent Owner first directs us to evidence to support the notion
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`that Petitioner (URC) and Ohsung share at least one employee. According
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`to Patent Owner, Mr. Jak You is a “key remote control executive [who]
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`identifies himself as both an Ohsung and URC employee.” Id. Evidence
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`that Mr. You first worked for Petitioner (URC), then worked for Ohsung for
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`demonstrating that Petitioner and Ohsung share employees, dates back to
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`August 8, 2001 (Ex. 2019), July 16, 2012 (Ex. 2018), and July 30, 2013
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`(Exhibit 2021). Such evidence, however, does not tend to show that Mr.
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`You, around the time of filing of Petitioner’s Petition, held himself out as
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`working for both Ohsung and Petitioner, or that Ohsung and Petitioner
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`“share employees.” We would want to know the relationship status between
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`Petitioner and Ohsung around the time Petitioner filed its Petition, as far as
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`sharing of employees goes.
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`In any event, and even assuming that URC and Ohsung share an
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`employee, we do not agree with Patent Owner that such a sharing of one
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`employee (Mr. You) suggests that Ohsung exercised or could have exercised
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`control over Petitioner’s participation in the proceeding. For instance, Mr.
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`You is said to have been a director of engineering for Petitioner. Id. at 36–
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`37. Patent Owner has not shown that Mr. You was in a position within
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`Ohsung to persuade Ohsung and/or Petitioner to make a litigation decision to
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`pursue an inter partes proceeding.
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`Moreover, we are not persuaded by Patent Owner’s argument that
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`because URC previously paid for office space which an Ohsung employee
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`(Mr. You) used, this suggests that Ohsung has reciprocated by paying for
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`anything associated with the proceedings or controlled the proceeding in any
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`other way. Id. If anything, the evidence tends to show that URC pays for
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`expenses, such as the costs associated with these proceedings, not Ohsung.
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`We also have considered Patent Owner’s argument that Ohsung’s and
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`URC’s close relationship is exemplified by a settlement and license
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`agreement (Ex. 2050, “agreement”) between Patent Owner and Petitioner, a
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`provision of which obligates Ohsung to pay royalties to Patent Owner. PO
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`Resp. 38. Patent Owner argues that the agreement strongly suggests that
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`Ohsung may have had the opportunity to control, direct, and/or influence the
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`present proceeding. Id. at 38–39. The agreement was executed in 2004.
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`The royalties that Patent Owner mentions were paid out in 2005, 2006, and
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`2007. Patent Owner has not shown how the agreement exemplifies a close
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`relationship in 2014 when the petition in this proceeding was filed.
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`Moreover, the agreement and royalties are directed to a set of patents, none
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`of which is the patent involved in this proceeding. Accordingly, we are not
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`persuaded by this argument.
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`Lastly, we are not persuaded by Patent Owner’s argument that
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`because URC and Ohsung share litigation counsel in the related case, that
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`that tends to show that Ohsung has controlled, or had the opportunity to
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`control, this proceeding. In summary, and based on the totality of arguments
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`and evidence presented, we are not persuaded that Ohsung is a real party-in-
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`interest on behalf of Petitioner.
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`B. Claim Interpretation
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`The ’761 patent has expired and, thus, cannot be amended. For claims
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`of an expired patent, the Board’s claim interpretation is similar to that of a
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`district court. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). “In
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`determining the meaning of the disputed claim limitation, we look
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`principally to the intrinsic evidence of record, examining the claim language
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`itself, the written description, and the prosecution history, if in evidence.”
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`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
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`(Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17
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`(Fed. Cir. 2005) (en banc)). However, there is a “heavy presumption” that a
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`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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`Petitioner proffers constructions for several means-plus-function
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`terms (Pet. 14–20), and Patent Owner weighs in on those constructions (PO
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`Resp. 5–22). For purposes of this Final Written Decision, we determine that
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`those terms do not require express construction. Patent Owner also contends
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`that Petitioner’s failure to propose a construction for “IR lamp driver
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`means,” “receiving means,” “decoding means,” “first connector means,” and
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`“interface connector means” in accordance with 35 U.S.C. § 112, sixth
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`paragraph, is fatal to the Petition. PO Resp. 2–3. We agree with Petitioner,
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`however, that these “means” are part of means-plus-function limitations
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`which Petitioner did construe. PO Resp. 11.
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`For this Final Written Decision, we determine that only the terms
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`“code data” and “instruction codes” require express construction.
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`Code Data
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`Claim 1 recites “code data for creating appropriate IR lamp driver
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`instructions.” Ex. 1001, 22:61–62. Independent claims 14, 15, 16, and 17
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`recite similar language. Patent Owner argues that “code data” means
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`“instructions and timing information for generating an infrared signal.” PO
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`Resp. 10. Both parties agree that “code data” includes timing information or
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`data, but the parties disagree that code data also includes instructions.4 Id.;
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`Pet. Reply 4; Tr. 13, 40, 59. It is necessary for us to construe the phrase
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`because there is a dispute about whether the prior art (Ciarcia) describes
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`code data. For example, Patent Owner agrees that Ciarcia describes
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`supplying from outside the remote control timing data to the remote control,
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`but disagrees that Ciarcia also describes supplying instructions to the remote
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`control. PO Resp. 26–28. For the reasons that follow, we determine that
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`code data includes timing information or data, but need not include
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`instructions.
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`We begin with the plain language of claim 1. Claim 1 recites enabling
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`“at least one of (a) instruction codes or (b) code data for creating appropriate
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`IR lamp driver instructions.” Based on the words of claim 1, the code data
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`alone may be used for creating IR lamp driver instructions. Moreover, the
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`claim requires enabling5 either instruction codes or code data to be supplied
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`4 Patent Owner refers to instructions as programming (computer
`instructions) or computer executable instructions. PO Resp. 27; Ex. 2029
`¶ 72; Tr. 66. Patent Owner contrasts instructions with timing information,
`which, it submits, is data. PO Resp. 24; Tr. 64.
`5 During trial hearing, counsel for Petitioner made arguments that due to the
`word “enabling” the claim language does not require that anything be
`supplied from outside the remote control, arguments that were not presented
`previously. See, e.g., Tr. 87–88. We need not and do not consider
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`from outside the remote control. While the remaining independent claims
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`14, 15, 16, and 17 do not recite the exact same limitation, each of those
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`claims also recites instruction codes in addition to code data. In its
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`Response, Patent Owner does not explain how “instruction codes” are
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`different, if they are at all, from the “instructions” it argues should be
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`included in the construction of “code data.” The Specification of the ’761
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`patent uses “instructions” interchangeably with “instruction codes” for
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`generating, or creating, infrared (IR) codes. See, e.g., Ex. 1001, 9:35–43.
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`Based on the record before us, we find that instruction and instruction codes
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`with respect to creating IR lamp driver instructions are synonymous insofar
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`as the Specification and the claims are concerned. Patent Owner has not
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`explained otherwise.6
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`None of the challenged claims define or further explain what “code
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`data” means. For example, there is nothing in claim 1 that would lead us to
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`believe that data, albeit code data, should be construed to mean data plus
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`programming or executable computer instructions. The phrase is “code
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`data.” Moreover, the challenged claims distinguish between instruction
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`codes and code data by claiming them both as separate elements. Based on
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`the plain words of the challenged claims, code data and instruction codes are
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`Petitioner’s arguments advanced during trial hearing that were not raised
`prior to the trial hearing. To do otherwise would be prejudicial to Patent
`Owner.
`6 In its Reply brief, and during hearing, Petitioner argued that the claim 1
`“instruction codes” are synonymous to the “instructions” that Patent Owner
`argues is part of “code data.” Pet. Reply 4, 7–8; Tr. 18. Patent Owner had
`ample opportunity to explain, during hearing, that “instruction codes” are
`different from “instructions” that it argues is part of “code data,” but did not
`do so. Tr. 38.
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`not the same thing. Yet, Patent Owner’s claim construction would
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`effectively rewrite the language to remove, for example with respect to
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`claim 1, the “at least one of . . . or” language. For example, claim 1 covers
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`choosing both instruction codes and code data, but under Patent Owner’s
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`construction such scenario would make little sense because code data would
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`also include instruction codes or instructions.
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`We next turn to the Specification of the ’761 patent. Patent Owner
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`focuses on the following passage from the Specification of the ’761 patent in
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`support of its argument that code data includes instructions:
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`In the method for learning or acquiring code data for infrared
`codes disclosed herein, no counting of pulses is carried out.
`Instead the method involves the following steps:
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`(a) receiving a transmission of a train of pulses from a remote
`control transmitter;
`(b) recording the point-in-time of an edge of each pulse in a
`train of the pulses;
`(c) transforming the recorded point-in-time data into a list of
`instructions for generating a replica of the train of pulses;
`(d) timing the duration of a train of the pulses;
`(e) timing the period between trains of pulses;
`(f) associating a function key of the universal remote control
`device 10 with the time duration of the train of pulses and
`the list of instructions for generating a replica of the train
`of pulses;
`(g) determining whether or not repetitions of the transmission
`of train of pulses is present;
`(h) ignoring repetitions of the train of pulses;
`(i) noting that repetitions are present; and
`(j) storing for use in a universal remote control device, the
`information acquired in steps (c), (d), (e), (f), and (i).
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`
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`Ex. 1001, 10:45–68.
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`Patent Owner argues that step (c) from above identifies instructions,
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`and steps (d), (e), (f), and (i) identify timing information. PO Resp. 23.
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`Patent Owner further argues that Figure 14 and the corresponding text of the
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`Specification of the ’761 patent confirm that the phrase “code data” is
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`different from an IR code or signal, and is used to generate the IR code
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`based on instructions and timing data. Id. (citing Ex. 2029 ¶¶ 62–67). We
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`have reviewed Mr. Cook’s testimony in support of the proposed
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`construction. Neither he nor Patent Owner discusses any other passage in
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`the Specification of the ’761 patent. Rather, his explanation for why we
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`should construe narrowly “code data” focuses solely on one embodiment of
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`the Specification. Ex. 2029 ¶¶ 62–67.
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`There are several other descriptions in the ’761 patent Specification
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`besides the one above that would indicate to a person of ordinary skill in the
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`art that code data need not include “instructions.” For example, there are
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`several passages that describe code data as separate and distinct from
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`instructions or instruction codes as follows:
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`Incoming data is received serially from data supply
`means, such as from the memory of a personal computer at
`serial port 3 and conveyed to input port 112, when it is desired
`to update the code data and/or instructions in the RAM 54.
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`Id. at 9:17–21 (emphasis added).
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`After the infrared code is deciphered, the code data
`therefor and instructions for generating such code (see the flow
`chart in FIG. 14) are stored in a programming computer 200
`(FIG. 10) and the device 10 is programmed as explained below.
`It is to be noted that circuitry 42 has no ROM and all
`instruction codes and code data are loaded directly into the
`RAM 54. This allows for infinite upgradability in the field via
`the serial ports 1, 2, 3.
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`Id. at 9:35–43 (emphasis added).
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`(6) The multiplexing of the address and data lines
`between the RAM 54 and the CPU 56 enables scrambling of the
`instruction codes and the code data so that the memory image
`in the RAM 54 is encrypted.
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`Id. at 22:23–27 (emphasis added). In addition, a grandparent patent of the
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`’761 patent teaches that only the timing information is part of “code data”:
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`“In learning the infrared code and transforming same to code data . . . , only
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`the time duration of the pulses . . . as well as the time duration of the pause
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`between bursts are sensed and used to learn and later to generate the infrared
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`codes.” Ex. 1011, 1:57–66 (emphasis added).
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`From the above passages, a person of ordinary skill in the art would
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`have understood that code data need not include instructions. In other
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`words, the above passages indicate that “instructions” or instruction codes
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`are separate from “code data.” If code data necessarily included instructions
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`or instruction codes, there would be no occasion for the Specification to
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`refer to instructions or instruction codes separately from code data. Yet, the
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`Patent Owner Response and the supporting testimony of Mr. Cook (Ex.
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`2029) are silent with respect to these passages.
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`Lastly, the Specification of the ’761 patent describes that code data for
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`the infrared codes “may be obtained from vendor information sheets and
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`specifications, can be determined using the methods disclosed in U.S. Pat.
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`Nos. 4,623,887 and 4,626,848, or by the method disclosed herein.” Ex.
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`1001, 10:39–44. Again, the Patent Owner Response and the supporting
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`testimony of Mr. Cook (Ex. 2029) are silent with respect to this passage and
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`the other ways that code data may be obtained or determined. In summary,
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`there are many passages in the Specification of the ’761 patent that tend to
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`support not construing “code data” as Patent Owner would want us to, yet
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`neither the Patent Owner Response nor the supporting testimony of Mr.
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`Cook (Ex. 2029) discusses any of those other passages. Rather, Patent
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`Owner’s arguments and Mr. Cook’s testimony are confined to discussing
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`only the one embodiment that Patent Owner argues supports the contention
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`that code data always includes necessarily instructions. For all of the
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`reasons discussed above, we are not persuaded by Patent Owner’s arguments
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`that “code data” includes necessarily instructions. Based on the record
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`before us, “code data” includes timing information or data, but need not
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`include instructions.
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`Instruction Codes
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`As explained above, the record supports the determination that
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`“instruction codes” is synonymous with “instructions” that Patent Owner
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`argues is part of code data. Pet. Reply 4, 7–8; Tr. 18, 38. As also explained
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`above, Patent Owner argues that instructions (instruction codes) are
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`programming (computer instructions) or computer executable instructions.
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`PO Resp. 27; Ex. 2029 ¶ 72; Tr. 66. Patent Owner contrasts instructions
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`with timing information, which, it submits, is data. PO Resp. 24; Tr. 64.
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`Petitioner argues that code data “refers in general to data” and that
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`instruction codes requires “instructions.” Pet. Reply 6–7. For purposes of
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`this Decision, we need not construe the full metes and bounds of “instruction
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`codes.” Rather, it is sufficient for purposes of this Decision to note that the
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`claim term “instruction codes” requires instructions and is different from the
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`claimed term “code data” which includes timing information or data. This is
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`particularly evident in independent claims 16 and 17, each of which recites
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`“instruction codes and code data for creating appropriate IR lamp driver
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`instructions” as two different elements.
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`C. Principles of Law
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In
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`that regard, an obviousness analysis “need not seek out precise teachings
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`directed to the specific subject matter of the challenged claim, for a court
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`can take account of the inferences and creative steps that a person of
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`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1262 (Fed. Cir. 2007). The level of
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`ordinary skill in the art is reflected by the prior art of record. See Okajima v.
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`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc.,
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`57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA
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`1978).
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`We analyze the asserted ground of unpatentability in accordance with
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`the above-stated principles.
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`D. Claims 1, 9, 10, and 14–17—Obviousness over Ciarcia and Hastreiter
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`Petitioner asserts that claims 1, 9, 10, and 14–17 are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over the combination of Ciarcia and
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`Hastreiter. Pet. 48–58. In its Petition, Petitioner provides an explanation
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`how the combination of Ciarcia and Hastreiter collectively meets each claim
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`limitation of claims 1, 9, 10, and 14–17 and articulates a rationale to
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`combine the teachings. Id. Petitioner also relies upon a Declaration of
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`Stephen D. Bristow to support the assertions made in connection with the
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`Petition. Ex. 1013.
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`Patent Owner argues that neither Ciarcia nor Hastreiter meets the code
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`data limitation of all of the involved claims. PO Resp. 26–28. Patent Owner
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`also argues that there is insufficient reason to combine Ciarcia and
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`Hastreiter. Id. at 28–30. Lastly, Patent Owner argues that secondary
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`considerations weigh in favor of the nonobviousness of claims 1, 9, 10, and
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`14–17. Id. at 30–34. To support its contentions, Patent Owner relies upon
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`the Declarations of Alex Cook (Ex. 2029) and Ramzi S. Ammari (Ex. 2064).
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`For the reasons that follow, we determine that Petitioner has shown by
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`a preponderance of the evidence that claims 1, 9, 10, 14, and 15 of the ’761
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`patent are unpatentable, but has not shown by a preponderance of the
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`evidence that claims 16 and 17 are unpatentable.
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`Ciarcia
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`Ciarcia describes a trainable remote control (Master Controller) with a
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`keypad for inputting commands into the remote control. Ex. 1009, 114.7
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`The remote control includes a central processing unit (CPU) (Intel 8031
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`7 Citations are to the reference’s magazine page numbers rather than the
`exhibit page numbers.
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`microprocessor, IC1), memory (RAM IC11) coupled to the CPU, and
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`infrared LEDs and driver circuitry that produce an IR signal to a controlled
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`device. Id. at 114–115. The remote control may be connected to a personal
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`computer using three wires from an RS-232 interface. Id. at 119 (“The serial
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`connector is an RJ-11 telephone jack instead of the usual 25-pin DB-25
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`connector. Only three wires are required: data from the PC, data to the PC,
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`and signal ground.”) The personal computer is connected to the remote
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`control via the RS-232 interface and is “used to set up menus of devices
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`(receivers, CD players, tape decks) and functions for each device (turn on,
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`play forward, etc.).” Id. at 114. Once a menu is downloaded to the remote
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`control, each function is taught and tested, after which a completed menu
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`and synthesis data are uploaded to the personal computer and “stored on a
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`disk (in case you want to load it into another Master Controller or add
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`another device later without retraining all of them).” Id.
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`Hastreiter
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`
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`Hastreiter describes keyboard data input assemblies, including
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`circuitry for minimizing the number of interconnections with a
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`microprocessor or other apparatus with which a keyboard is used. Ex. 1008,
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`col. 1:5–10. In particular, Hastreiter describes a keyboard circuit that uses
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`diodes between row and column lines of the keyboard, similar to the
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`keyboard circuit described in the ’761 patent. See, e.g., Ex. 1001, Fig. 9B;
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`Ex. 1008, Figs. 1, 2.
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`Petitioner’s Assertions
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`Petitioner relies on Ciarcia to meet all of the claim limitations of the
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`challenged claims, with the exception of the “input means.” Pet. 48–58.
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`Based on its construction of “input means” to include at least the
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`corresponding structure of a keyboard circuit as shown in Fig. 9B of the
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`’761 patent, Petitioner relies on the keyboard circuit of Hastreiter in
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`combination with Ciarcia to meet the “input means.” Id. at 22–23, 29, and
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`49–50. Petitioner points to teachings in Hastreiter that the keyboard design
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`can be used to minimize the required number of interconnections with a
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`microprocessor or other apparatus with which a keyboard is used. Id. at 49–
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`50; Ex. 1008, 1:5–11. Mr. Bristow opines that skilled artisans at the time of
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`the invention would have understood that Hastreiter’s keyboard circuit could
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`have been used in Ciarcia’s remote control to minimize connections to the
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`microprocessor. Ex. 1013 ¶ 72.
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`Instruction Codes and/or Code Data
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`
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`Claim 1 recites “data coupling means including receiving means
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`coupled to the CPU for enabling at least one of (a) instruction codes or (b)
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`code data for creating appropriate IR lamp driver instructions . . . to be
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`supplied from outside the remote control through the receiving means
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`directly to the CPU for direct entry to the memory.” Claim 9 and claim 10,
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`which depend from claim 1 also include this limitation. Independent claim
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`14 and independent claim 15 recite similar language.8 Claims 1, 9, 10, 14,
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`and 15, thus, recite receiving, or enabling to be supplied from outside the
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`remote (e.g., from a computer connected to the remote control), instruction
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`codes or code data. Independent claim 16 and independent claim 17,
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`however, are different. Claim 16 recites “data coupling means for
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