Paper 9
`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 IPR2014-01106
`Patent 5,255,313
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. BACKGROUND
`
`
`
`Petitioner, Universal Remote Control, Inc., filed a petition requesting
`
`an inter partes review of claims 1, 2, and 20 of U.S. Patent No. 5,255,313
`
`(Ex. 1001, “the ’313 patent”) under 35 U.S.C. §§ 311–319. Paper 1
`
`(“Petition” or “Pet.”). Patent Owner, Universal Electronics, Inc., filed a
`
`
`
`
`
`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 IPR2014-01106
`Patent 5,255,313
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. BACKGROUND
`
`
`
`Petitioner, Universal Remote Control, Inc., filed a petition requesting
`
`an inter partes review of claims 1, 2, and 20 of U.S. Patent No. 5,255,313
`
`(Ex. 1001, “the ’313 patent”) under 35 U.S.C. §§ 311–319. Paper 1
`
`(“Petition” or “Pet.”). Patent Owner, Universal Electronics, Inc., filed a
`
`
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`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, 2, and 20 of the ’313 patent.
`
`
`
`A. Related Proceedings
`
`According to Petitioner, the ’313 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 ’313 Patent
`
`The ’313 patent relates to a universal remote control system that
`
`includes a computer having a memory and code data for creating infrared
`
`(IR) lamp driver instructions for the remote controller. Ex. 1001, Abstract.
`
`
`
`
`
`2
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`
`Figure 20 of the ’313 patent is reproduced below.
`
`
`
`
`
`
`
`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,
`
`col. 4, ll. 22–27. 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 col. 19, ll. 39–45. 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 col. 19, ll. 45–55.
`
`
`
`3
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`C. Illustrative Claim
`
`
`
`
`
`Each of claims 1, 2, and 20 is independent. Claim 1, reproduced
`
`below, is illustrative.
`
`1. A universal remote control system including a
`computer having a memory, code data for creating appropriate
`infrared (IR) lamp driver instructions for causing an infrared
`signal generator 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, stored in said
`memory of said computer, a universal 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 circuitry for supplying
`an infrared signal to a controlled device, a central processing
`unit (CPU) coupled to said input means and to said signal
`output means, memory means coupled to said CPU, and data
`coupling means for periodically coupling said computer to said
`remote control for receiving from said computer memory said
`code data for creating appropriate IR lamp driver instructions
`for causing said infrared signals which will cause specific
`functions to occur in a specific controlled device, for operating
`a variety of devices to be controlled into said memory means of
`said remote control to enable said 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 said data coupling means for
`coupling said remote control to said computer, directly, through
`a telephone line, through a modem and a telephone line, or
`through decoding means and a television set to receive a
`television signal picked up by the television set.
`
`
`
`
`
`D. Asserted Prior Art
`
`Wozniak
`
`US 4,918,439
`
`Apr. 17, 1990
`
`Ex. 1005
`
`Hastreiter
`
`US 4,667,181
`
`May 19, 1987
`
`Ex. 1006
`
`
`
`
`
`4
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`Ciarcia
`
`CS-232
`Manual
`
`
`
`Steve Ciarcia,
`“Build a Trainable
`Infrared Master
`Controller,” BYTE,
`at 113
`R. Karr et al.,
`“CORE Serial
`Interface (CS-232)
`Manual,” rev. 3.0
`Copyright by CL9
`
`
`
`Mar. 1987
`
`Ex. 1007
`
`
`
`1988
`
`Ex. 1008
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103(a) against claims 1, 2, and 20:
`
`
`
`References
`
`
`
`Wozniak, CS-232 Manual, and
`Hastreiter
`Ciarcia and Hastreiter
`
`
`
`Claims
`
`1, 2, and 20
`
`1, 2, and 20
`
`
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`The ’313 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
`
`5
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`(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) (citation omitted).
`
`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 for Periodically Coupling Said Computer to
`Said Remote Control
`
`
`
`i. Claim 20
`
`Claim 20 recites “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 code data
`
`for creating IR lamp driver instructions.” The parties agree that 35 U.S.C.
`
`6
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`§ 112, sixth paragraph applies to the “data coupling means” limitation of
`
`
`
`claim 20.
`
`Petitioner submits that the ’313 patent discloses that the function
`
`associated with the “data coupling means” of claim 20 is performed by
`
`structure “that includes” terminals (1–3) of a serial port coupled directly to
`
`ports (112, 121) of CPU 56, as shown in Figure 9B and described at column
`
`9, lines 7 through 16 and 35 through 38. Pet. 18. The structure “also
`
`includes” a cable, according to Petitioner. Id. 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. at 18–19. Patent Owner responds that the
`
`structure that performs the “periodically coupling” function of claim 20 is “a
`
`terminal of a port coupled to ports of the CPU and a cable.” Prelim. Resp.
`
`24.
`
`For purposes of this decision, we need not identify each embodiment
`
`in the ’313 patent’s specification that contains corresponding structure that
`
`performs the function associated with the “data coupling means” of claim
`
`20. The patent describes one embodiment that comprises signal coupling
`
`and converting assembly 206 (Fig. 20), which includes connector assembly
`
`207 and cable 208. Ex. 1001, col. 19, ll. 39–42. Conversion circuitry 230
`
`enables serial communication from connector assembly 207 to pins 212,
`
`214, and 216, which may connect with serial ports 1, 2, and 3 in the remote
`
`control device, as shown in Figures 21 and 22. Id. at col. 19, ll. 45–55; see
`
`also id. at Fig. 9B (serial ports 1, 2, and 3). Structure that corresponds to the
`
`“receiving” portion of the function of the “data coupling means” of claim 20
`
`is, thus, conversion circuitry 230, connector assembly 207, cable 208, and
`
`7
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`pins appropriate for passing a serial signal. The further function of
`
`
`
`“inputting into said memory means” requires, in addition, the CPU that
`
`receives the code data and inputs the data into memory. Ex. 1001, col. 9,
`
`ll. 7–16 (Fig. 9B, CPU 56).
`
`We are not persuaded that microprocessor instructions on how to
`
`receive, recognize, and interpret or process the IR lamp code data are
`
`necessary to implement the claimed function. See Ex. 1011 ¶ 35
`
`(Declaration of Stephen D. Bristow). Claim 20 recites receiving and
`
`inputting the code data. The claim does not recite recognizing, interpreting,
`
`or processing the data. Nor does structure corresponding to the function
`
`require software for periodically coupling the computer to the remote
`
`control. See id. ¶ 36. On this record, we find that no additional structure or
`
`software is necessary for “periodically” coupling the computer to the remote
`
`control. The ’313 patent discloses that the code data in the remote control
`
`RAM may be updated via the signal coupling and converting assembly when
`
`new equipment appears on the market. Ex. 1001, col. 9, l. 60 – col. 10, l. 1.
`
`For purposes of this decision, consistent with the corresponding structure we
`
`have identified in the ’313 patent, we interpret the language of
`
`“periodically” coupling as requiring that the cable and connectors that
`
`enable serial transmission of data may be disconnected from the computer
`
`and remote control device, as opposed to being a fixed, permanent
`
`connection.
`
`
`
`
`
`ii. Claim 2
`
`Claim 2 recites “data coupling means including terminal means
`
`comprising a receiving port coupled to said CPU for enabling code data for
`
`8
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`creating appropriate IR lamp driver instructions.” The ’313 patent makes
`
`
`
`clear that a serial port is a type of “terminal means.”
`
`[Prior art] Evans et al. does not teach or suggest the
`provision in a universal remote control of data coupling means
`including terminal means (such as serial ports) coupled to a
`CPU for enabling code data to be supplied from outside the
`remote control through the terminal means and CPU to a
`memory of the remote control.
`
`
`Ex. 1001, col. 1, ll. 52–57 (emphasis added). Unlike claim 20, claim 2 does
`
`not recite the further function of inputting code data into memory means.
`
`Similar to claim 20, we need not identify each embodiment in the ’313
`
`patent’s specification that contains corresponding structure that performs the
`
`function associated with the “data coupling means” of claim 2. On this
`
`record, we find that corresponding structure, in one embodiment, that
`
`performs the function associated with the “data coupling means” of claim 2
`
`consists of conversion circuitry 230, connector assembly 207, cable 208, and
`
`pins appropriate for passing a serial signal. Ex. 1001, Figs. 20–22.
`
`
`
`
`
`iii. Claim 1
`
`Claim 1 recites “data coupling means for periodically coupling said
`
`computer to said remote control for receiving from said computer memory
`
`said code data for creating appropriate IR lamp driver instructions.” On this
`
`record, we find that corresponding structure, in one embodiment, that
`
`performs the function associated with the “data coupling means” of claim 1
`
`consists of conversion circuitry 230, connector assembly 207, cable 208, and
`
`pins appropriate for passing a serial signal. Ex. 1001, Figs. 20–22.
`
`
`
`9
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`B. Further Limitations
`
`
`
`
`
`The claims further recite “input means including a set of keys or
`
`pushbuttons for inputting commands into the remote control” and “infrared
`
`signal output means including IR lamp driver circuitry for supplying an
`
`infrared signal to a controlled device.” Patent Owner argues that Petitioner
`
`has submitted unduly narrow constructions for these limitations. Prelim.
`
`Resp. 4–6.
`
`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 “input means” and the “infrared output signal means,”
`
`we are persuaded that it has identified the requisite structures in the prior art
`
`under such construction.
`
`
`
`Proposed Grounds of Unpatentability
`
`A. Section 103(a) – Ciarcia and Hastreiter
`
`Petitioner contends that claim 1 is unpatentable under 35 U.S.C.
`
`§ 103(a) based on Ciarcia and Hastreiter. To support its contention,
`
`Petitioner provides a detailed showing that maps limitations of illustrative
`
`claim 1 of the ’313 patent to structures in the universal remote control
`
`system described by Ciarcia. Pet. 48–54.
`
`Ciarcia describes a remote control with a keypad for inputting
`
`commands into the remote control. Ex. 1007, 114.1 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
`
`
`1 We cite to the reference’s magazine page numbers rather than the Exhibit
`page numbers.
`
`10
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`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 that
`
`Ciarcia teaches the same, or at least equivalent, structure as that in the ’313
`
`patent corresponding to the claim 1 “data coupling means.” See supra
`
`§ II.A.1.iii; Ex. 1011 ¶¶ 82–85. Similarly, we are persuaded, for purposes of
`
`this decision, that Ciarcia teaches the same, or at least equivalent, structure
`
`with respect to the “data coupling means” of claims 2 and 20. See supra
`
`§§ II.A.1.i, II.A.1.ii; Pet. 56, 59; Ex. 1011 ¶¶ 86, 88.
`
`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 by the ’313 patent. See, e.g., Ex. 1001,
`
`Fig. 9B; Ex. 1006, Figs. 1, 2. Patent Owner submits that the Petition does
`
`not provide any rational underpinning as to why one of ordinary skill in the
`
`art would have been motivated to combine the keyboard of Hastreiter with
`
`the remote control of Ciarcia. Prelim. Resp. 50. Patent Owner’s argument is
`
`unpersuasive. The Petition 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; Ex. 1006, col. 1, ll. 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, 2, and 20, and we are persuaded that
`
`Petitioner has met the threshold of 35 U.S.C. § 314(a). See Pet. 47–59. On
`
`11
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`the present record, we find that Petitioner has established a reasonable
`
`
`
`likelihood that Petitioner would prevail in its challenge of claims 1, 2, and
`
`20 on this ground.
`
`
`
`B. Section 103(a) – Wozniak, CS-232 Manual, and Hastreiter
`
`In light of the ground on which we are instituting review of claims 1,
`
`2, and 20, we do not institute review based on the asserted ground that these
`
`claims 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
`
`The Petition demonstrates a reasonable likelihood of prevailing on the
`
`ground of obviousness over Ciarcia and Hastreiter as to claims 1, 2, and 20.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claim.
`
`
`
`In consideration of the foregoing, it is
`
`IV. ORDER
`
`ORDERED that an inter partes review is instituted as to claims 1, 2,
`
`and 20 of the ’313 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 ’313 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
`
`12
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`
`
`
`FURTHER ORDERED that the trial is limited to the ground identified
`
`immediately above, and no other ground is authorized for the ’313 patent
`
`claims.
`
`13
`
`
`
`
`IPR2014-01106
`Patent 5,255,313
`
`For Petitioner:
`
`Douglas A. Miro
`dmiro@ostrolenk.com
`
`Peter Kang
`pkang@sidley.com
`
`Theodore Chandler
`tchandler@sidley.com
`
`Ferenc Pazmandi
`fpazmandi@sidley.com
`
`Keith Barkaus
`kbarkaus@ostrolenk.com
`
`
`For Patent Owner:
`
`Eric Maiers
`maierse@gtlaw.com
`
`Michael Nicodema
`nicodemam@gtlaw.com
`
`James Lukas
`lukasj@gtlaw.com
`
`Robbie Harmer
`harmer@gtlaw.com
`
`
`
`
`
`
`14
`
`
`
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