Paper 49
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: December 15, 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.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I. BACKGROUND
`
`
`
`Petitioner, Universal Remote Control, Inc., filed a request for 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
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: December 15, 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.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I. BACKGROUND
`
`
`
`Petitioner, Universal Remote Control, Inc., filed a request for 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
`
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`IPR2014-01106
`Patent 5,255,313
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`“Pet.”). The Board instituted an inter partes review of claims 1, 2, and 20
`
`
`
`on an asserted ground of unpatentability for obviousness. Paper 9 (“Dec. on
`
`Inst.”).
`
`Subsequent to institution, Patent Owner, Universal Electronics Inc.,
`
`filed a Patent Owner Response in both unredacted (confidential) and revised
`
`redacted forms (Papers 14 and 45 (“PO Resp.”)), along with a Motion to
`
`Seal (Paper 15). Petitioner filed a Reply in both unredacted (confidential)
`
`and revised redacted forms (Papers 20 and 46; (“Pet. Reply”)), along with a
`
`Motion to Seal (Paper 22).
`
`Patent Owner filed a Motion to Exclude (Paper 29; “PO Mot. to
`
`Exclude”). Petitioner filed an Opposition to the Motion to Exclude (Paper
`
`33; “Pet. Exclude Opp.”), and Patent Owner filed a Reply (Paper 36; “PO
`
`Exclude Reply”). Petitioner filed a Motion to Exclude (Paper 28; “Pet. Mot.
`
`to Exclude”). Patent Owner filed an Opposition to the Motion to Exclude
`
`(Paper 35; “PO Exclude Opp.”), and Petitioner filed a Reply (Paper 37, “Pet.
`
`Exclude Reply”).
`
` Patent Owner filed a Motion for Observations on Cross-Examination
`
`(Paper 30) and Petitioner filed a Response to the Observations (Paper 34).
`
`An oral hearing was held on August 19, 2015. A transcript of the
`
`hearing is included in the record (Paper 48; “Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1, 2, and 20 of the ’313 patent
`
`are unpatentable.
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`
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`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 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, Fig. 8 (operating circuitry), Fig. 9B
`
`(keyboard circuit). Memory is coupled to the CPU, which stores code data
`
`for generating infrared light to control an apparatus. Ex. 1001, Abstract.
`
`Memory may be updated from outside the remote control through data
`
`coupling circuitry and structure coupled to the CPU. Id.
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`
`
`
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`3
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`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.
`
`
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`4
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`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.
`
`5
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`D. Asserted Prior Art
`
`
`
`
`
`Hastreiter
`
`US 4,667,181
`
`May 19, 1987
`
`Ex. 1006
`
`
`
`Mar. 1987
`
`Ex. 1007
`
`Ciarcia
`
`
`
`Steve Ciarcia,
`“Build a Trainable
`Infrared Master
`Controller,” BYTE,
`at 113
`
`E. Asserted Ground of Unpatentability
`
`We instituted inter partes review on the ground that claims 1, 2, and
`
`20 of the ’313 patent are unpatentable under 35 U.S.C. § 103(a) over Ciarcia
`
`and Hastreiter.
`
`
`
`II. ANALYSIS
`
`A. Real Party-in-Interest
`
`Petitioner certifies that Universal Remote Control, Inc. (“URC”) is the
`
`real party-in-interest. Pet. 1. Patent Owner, however, contends that
`
`Petitioner failed to also name Ohsung Electronics Co., Ltd., and/or Ohsung
`
`Electronics U.S.A., Inc. (“Ohsung”), a supplier of products to Petitioner
`
`(URC), as real parties-in-interest and that Petitioner’s failure to do so is fatal
`
`to its Petition. PO Resp. 37–42.1
`
`Section 312(a) of Title 35 of the United States Code provides that a
`
`petition for inter partes review under 35 U.S.C. § 311 may be considered
`
`only if, among other things, the petition identifies all real parties-in-interest.
`
`35 U.S.C. § 312(a)(2). Whether a non-identified party is a real party-in-
`
`
`1 Citations are to the revised redacted version of the PO Response (Paper
`45).
`
`6
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`interest to a proceeding is a highly fact-dependent question. Office Patent
`
`
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial
`
`Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “A
`
`common consideration is whether the non-party exercised or could have
`
`exercised control over a party’s participation in a proceeding.” Trial
`
`Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). The
`
`concept of control generally means that “it should be enough the nonparty
`
`has the actual measure of control or opportunity to control that might
`
`reasonably be expected between two formal coparties.” Id.
`
`Patent Owner argues that Ohsung exercised or could have exercised
`
`control over Petitioner’s participation in this proceeding based on the close
`
`relationship between Petitioner and Ohsung. PO Resp. 38. In support of
`
`that argument, Patent Owner first directs us to evidence to support the notion
`
`that Petitioner (URC) and Ohsung share at least one employee. According
`
`to Patent Owner, Mr. Jak You is a “key remote control executive [who]
`
`identifies himself as both an Ohsung and URC employee.” Id. at 39.
`
`Evidence that Mr. You first worked for Petitioner (URC), then worked for
`
`Ohsung for demonstrating that Petitioner and Ohsung share employees,
`
`dates back to August 8, 2001 (Ex. 2019), July 16, 2012 (Ex. 2018), and July
`
`30, 2013 (Exhibit 2021). Such evidence, however, does not tend to show
`
`that Mr. You, around the time of filing of Petitioner’s Petition, held himself
`
`out as working for both Ohsung and Petitioner, or that Ohsung and Petitioner
`
`“share employees.” We would want to know the relationship status between
`
`Petitioner and Ohsung around the time Petitioner filed its Petition.
`
`In any event, and even assuming that URC and Ohsung share an
`
`employee, we do not agree with Patent Owner that such a sharing of one
`
`7
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`employee (Mr. You) suggests that Ohsung exercised or could have exercised
`
`control over Petitioner’s participation in the proceeding. For instance, Mr.
`
`You is said to have been a director of engineering for Petitioner. Id. at 39.
`
`Patent Owner has not shown that Mr. You was in a position within Ohsung
`
`to persuade Ohsung and/or Petitioner to make a litigation decision to pursue
`
`an inter partes proceeding.
`
`Moreover, we are not persuaded by Patent Owner’s argument that
`
`because URC previously paid for office space which an Ohsung employee
`
`(Mr. You) used, this suggests that Ohsung has reciprocated by paying for
`
`anything associated with the proceedings or controlled the proceeding in any
`
`other way. PO Resp. 39–40. If anything, the evidence tends to show that
`
`URC pays for expenses, such as the costs associated with this proceeding,
`
`not Ohsung.
`
`We also have considered Patent Owner’s argument that Ohsung’s and
`
`URC’s close relationship is exemplified by a settlement and license
`
`agreement (Ex. 2050, “agreement”) between Patent Owner and Petitioner, a
`
`provision of which obligates Ohsung to pay royalties to Patent Owner. PO
`
`Resp. 41. Patent Owner argues that the agreement strongly suggests that
`
`Ohsung may have had the opportunity to control, direct, and/or influence the
`
`present proceeding. Id. The agreement was executed in 2004. The royalties
`
`that Patent Owner mentions were paid out in 2005, 2006, and 2007. Patent
`
`Owner has not shown how the agreement exemplifies a close relationship in
`
`2014 when the petition in this proceeding was filed. Moreover, the
`
`agreement and royalties are directed to a set of patents, none of which is the
`
`patent involved in this proceeding. Accordingly, we are not persuaded by
`
`this argument.
`
`8
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`Lastly, we are not persuaded by Patent Owner’s argument that
`
`because URC and Ohsung share litigation counsel in the related case, that
`
`tends to show that Ohsung has controlled, or had the opportunity to control,
`
`this proceeding. In summary, and based on the totality of arguments and
`
`evidence presented, we are not persuaded that Ohsung is a real party-in-
`
`interest on behalf of Petitioner.
`
`
`
`B. 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
`
`(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).
`
`
`
`1. Code Data
`
`
`
`Claim 1 recites “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” in computer
`
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`memory. Claim 1 further recites “data coupling means for periodically
`
`
`
`coupling said computer to said remote control for receiving from said
`
`computer memory said code data.” Claim 20 recites similar limitations with
`
`respect to “code data.” Claim 2 recites similar limitations with respect to
`
`“code data,” in addition to reciting a receiving port coupled to the CPU “for
`
`enabling” code data.
`
`
`
`Patent Owner argues that “code data” means “instructions and timing
`
`information for generating an infrared signal.” PO Resp. 25.2 The parties
`
`agree that “code data” includes timing information or data, but the parties
`
`disagree that code data also includes instructions.3 Id.; Pet. Reply 5; Tr. 13,
`
`40, 59. It is necessary for us to construe the phrase because there is a
`
`dispute about whether the prior art (Ciarcia) describes supplying from
`
`outside the remote control (e.g., a computer connected through a cable to the
`
`remote control), code data to the remote control. In particular, Patent Owner
`
`agrees that Ciarcia describes supplying from outside the remote control
`
`timing data to the remote control, but disagrees that Ciarcia also describes
`
`supplying instructions to the remote control. PO Resp. 30–31. For the
`
`reasons that follow, we determine that code data includes timing information
`
`or data, but need not include instructions.
`
`
`2 Patent Owner also submits (id. at 27) that “code data” means “the
`transmission scheme and data used to create IR lamp driver instructions.”
`Patent Owner does not, however, indicate any basis for that alternative
`construction.
`
` 3
`
` Patent Owner refers to instructions as programming (computer
`instructions) or computer executable instructions. Ex. 2029 ¶ 76; Tr. 66.
`Patent Owner contrasts instructions with timing information, which, it
`submits, is data. Tr. 64.
`
`
`10
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`We begin with the plain language of the claims. Each of claims 1 and
`
`
`
`20 recites “code data for creating appropriate infrared (IR) lamp driver
`
`instructions for causing an infrared signal generator to emit infrared signals.”
`
`Claim 2 recites enabling4 “code data for creating appropriate IR lamp driver
`
`instructions for causing said infrared signal output means to emit infrared
`
`signals.” Based on the words of the claims, the code data is used for
`
`creating IR lamp driver instructions.
`
`
`
`Patent Owner focuses on the following passage from the Specification
`
`of the ’313 patent in support of its argument that code data necessarily
`
`includes instructions:
`
`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:
`
`(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;
`
`
`4 During trial hearing, counsel for Petitioner made arguments that due to the
`word “enabling” claim 2 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 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.
`
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`(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).
`
`Ex. 1001, col. 10, ll. 37–60; PO Resp. 26–27.
`
`
`
`
`
`Patent Owner argues that step (c) from above identifies instructions,
`
`and steps (d), (e), (f), and (i) identify timing information. PO Resp. 27.
`
`Patent Owner further argues that Figure 14 and the corresponding text of the
`
`Specification of the ’313 patent confirm that the phrase “code data” is
`
`different from an IR code or signal, and is used to generate the IR code
`
`based on instructions and timing data. Id. (citing Ex. 2029 ¶¶ 69–71). We
`
`have reviewed the Declaration of Mr. Alex Cook in support of the proposed
`
`construction. Neither he nor Patent Owner discusses any other passage in
`
`the Specification of the ’313 patent. Rather, his explanation for why we
`
`should construe narrowly “code data” focuses solely on one embodiment of
`
`the Specification. Ex. 2029 ¶¶ 69–71.
`
`Moreover, there are several passages that describe code data as
`
`separate and distinct from instructions or instruction codes as follows:
`
`Incoming data is received serially at serial port 2 and conveyed
`to input port 112, when it is desired to update the code data
`and/or instructions in the RAM 54.
`
`Ex. 1001, col. 9, ll. 13–16 (emphasis added).
`
`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 is programmed as explained below.
`
`12
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`It is to be noted that the 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.
`
`Id. at col. 9, ll. 30–38 (emphases added).
`
`(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.
`
`Id. at col. 22, ll. 17–20 (emphasis added).
`
`
`From the above passages, a person of ordinary skill in the art would
`
`have understood that code data need not include instructions. In other
`
`words, the above passages indicate that “instructions” or instruction codes
`
`are separate from “code data.” If code data necessarily included instructions
`
`or instruction codes, there would be no occasion for the Specification to
`
`refer to instructions or instruction codes separately from code data. Yet, the
`
`Patent Owner Response and the supporting testimony of Mr. Cook (Ex.
`
`2029) are silent with respect to these passages.
`
`Lastly, the Specification of the ’313 patent describes that code data for
`
`the infrared codes “may be obtained from vendor information sheets and
`
`specifications, can be determined using the methods disclosed in U.S. Pat.
`
`Nos. 4,623,887 and 4,626,848, or by the method disclosed herein.” Ex.
`
`1001, col. 10, ll. 32–36. Again, the Patent Owner Response and the
`
`supporting testimony of Mr. Cook (Ex. 2029) are silent with respect to this
`
`passage and the other ways that code data may be obtained or determined.
`
`In summary, there are many passages in the Specification of the ’313 patent
`
`that tend to support not construing “code data” as Patent Owner would have
`
`13
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`it, yet neither the Patent Owner Response nor the supporting testimony of
`
`
`
`Mr. Cook (Ex. 2029) discusses any of those other passages. Rather, Patent
`
`Owner’s arguments and Mr. Cook’s testimony are confined to discussing
`
`only the one embodiment that Patent Owner argues supports the contention
`
`that code data necessarily includes instructions. For all of the reasons
`
`discussed above, we are not persuaded by Patent Owner’s arguments that
`
`“code data” necessarily includes instructions. Based on the record before us,
`
`“code data” includes timing information or data, but need not include
`
`instructions.
`
`
`
`C. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In
`
`that regard, an obviousness analysis “need not seek out precise teachings
`
`directed to the specific subject matter of the challenged claim, for a court
`
`can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; In re
`
`Translogic Tech., 504 F.3d 1249, 1262 (Fed. Cir. 2007). The level of
`
`14
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`ordinary skill in the art is reflected by the prior art of record. See Okajima v.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc.,
`
`57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA
`
`1978).
`
`
`
`D. Section 103(a) – Ciarcia and Hastreiter
`
`Petitioner asserts that claims 1, 2, and 20 are unpatentable under 35
`
`U.S.C. § 103(a) as obvious over the combination of Ciarcia and Hastreiter.
`
`Pet. 47–59. In its Petition, Petitioner explains how the combination of
`
`Ciarcia and Hastreiter collectively meets each claim limitation and
`
`articulates a rationale to combine the teachings. Id. Petitioner also relies
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`upon a Declaration of Stephen D. Bristow to support the assertions made in
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`connection with the Petition. Ex. 1011.
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`Patent Owner argues that neither Ciarcia nor Hastreiter meets the code
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`data limitations of the claims. PO Resp. 29–31. Patent Owner also argues
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`that there is insufficient reason to combine Ciarcia and Hastreiter. Id. at 31–
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`33. Lastly, Patent Owner argues that secondary considerations weigh in
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`favor of the nonobviousness of claim 1. Id. at 33–37. To support its
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`contentions, Patent Owner relies upon Declarations of Alex Cook (Ex. 2029)
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`and Ramzi Ammari (Ex. 2030).
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`1. Ciarcia
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`
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`
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`Ciarcia describes a trainable remote control (Master Controller) with a
`
`keypad for inputting commands into the remote control. Ex. 1007, 114.5
`
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`5 Citations are to the reference’s magazine page numbers rather than the
`exhibit page numbers.
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`15
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`IPR2014-01106
`Patent 5,255,313
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`The remote control includes a central processing unit (CPU) (Intel 8031
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`
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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
`
`device. Id. at 114–15. The remote control may be connected to a personal
`
`computer using three wires from an RS-232 interface. Id. at 119 (“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.”). 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 disk
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`(in case you want to load it into another Master Controller or add another
`
`device later without retraining all of them).” Id.
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`
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`
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`2. Hastreiter
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`Hastreiter describes keyboard data input assemblies, including
`
`circuitry for minimizing the number of interconnections with a
`
`microprocessor or other apparatus with which a keyboard is used. Ex. 1006,
`
`col. 1, ll. 5–10. In particular, Hastreiter describes a keyboard circuit that
`
`uses diodes between row and column lines of the keyboard, similar to the
`
`keyboard circuit described in the ’313 patent. See, e.g., Ex. 1001, Fig. 9B;
`
`Ex. 1006, Figs. 1, 2.
`
`
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`16
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`IPR2014-01106
`Patent 5,255,313
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`3. Petitioner’s Assertions
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`
`
`
`
`
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`Petitioner relies on Ciarcia to meet all of the limitations of claims 1, 2,
`
`and 20, with the exception of the “input means.” Pet. 48–59. Based on its
`
`construction of “input means” to include at least the corresponding structure
`
`of a keyboard circuit as shown in Fig. 9B of the ’313 patent, Petitioner relies
`
`on the keyboard circuit of Hastreiter in combination with Ciarcia to meet the
`
`“input means.” Id. at 13–14, 49, 54–55, and 58. 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; Ex. 1006, col. 1, ll. 5–11.
`
`Mr. Bristow opines that skilled artisans at the time of the invention would
`
`have understood that Hastreiter’s keyboard circuit could have been used in
`
`Ciarcia’s remote control to minimize connections to the microprocessor. Ex.
`
`1011 ¶ 74.
`
`
`
`
`
`
`
`4. Code Data
`
`Patent Owner does not contest that any feature is missing from the
`
`combination of Ciarcia and Hastreiter other than supplying from outside the
`
`remote control (e.g., a computer connected through a cable to the remote
`
`control) “code data” to the remote control. PO Resp. 29–31. Petitioner
`
`accounts for the supplying from outside the remote control (e.g., a computer
`
`connected through a cable to the remote control) “code data” limitation by,
`
`for example, relying on the description in Ciarcia of downloading completed
`
`menu and synthesis data to the same or different Master Controller. Pet. 51–
`
`52, 42; Ex. 1007, 114; Ex. 1107 ¶¶ 72–74; Tr. 31–32.
`
`17
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`IPR2014-01106
`Patent 5,255,313
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`According to Patent Owner, the code data limitation is missing
`
`
`
`because Ciarcia does not describe supplying “code data” comprising
`
`instructions and timing information for generating an infrared signal from a
`
`computer to the remote control. PO Resp. 29–31. As explained above in the
`
`claim construction section, Patent Owner has not shown that “code data”
`
`necessarily includes instructions. Rather, as explained in the claim
`
`construction section, “code data” includes timing information or data, but
`
`need not include instructions, e.g., programmable software code. Patent
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`Owner concedes that Ciarcia describes downloading timing information to
`
`the remote control. PO Resp. 30–31; Ex. 1053, 357; Tr. 41.
`
`Based on the record before us, Petitioner has shown by a
`
`preponderance of the evidence that all of the limitations of claims 1, 2, and
`
`20 are met by the combination of Ciarcia and Hastreiter.
`
`5. Combining Ciarcia and Hastreiter
`
`
`
`
`
`Patent Owner argues that it would not have been obvious to combine
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`Ciarcia and Hastreiter. PO Resp. 31–33. As explained above, Petitioner
`
`articulates a rationale with supporting evidence for combining Ciarcia and
`
`Hastreiter. In particular, 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; Ex. 1006, col. 1, ll. 5–11. Mr. Bristow opines
`
`that skilled artisans at the time of the invention would have understood that
`
`Hastreiter’s keyboard circuit could have been used in Ciarcia’s remote
`
`control to minimize connections to the microprocessor. Ex. 1011 ¶ 74.
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`Accordingly, we are not persuaded by Patent Owner’s conclusory assertion
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`18
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`IPR2014-01106
`Patent 5,255,313
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`that “[t]he Petition fails to articulate any reason why one having ordinary
`
`
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`skill in the art would have been motivated to combine Ciarcia with
`
`Hastreiter.” PO Resp. 31.
`
`
`
`Patent Owner also argues that since Hastreiter says nothing about
`
`remote controls it is not in the same field as Ciarcia, directing attention to
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`Mr. Cook’s testimony, who testifies to the same. Id. at 32; Ex. 2029 ¶ 89.
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`The test for determining whether a prior art reference constitutes analogous
`
`art to the claimed invention is: (1) whether the prior art is from the same
`
`field of endeavor, regardless of the problem addressed, and (2) if the
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`reference is not within the field of the inventor’s endeavor, whether the
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`reference still is reasonably pertinent to the particular problem with which
`
`the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
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`2004).
`
`Here, Patent Owner has not explained sufficiently why Hastreiter is
`
`from a different field of endeavor as that of the claimed invention. Patent
`
`Owner’s comparison between the fields of endeavor of Ciarcia and
`
`Hastreiter misses the mark. In any event, Patent Owner’s argument that
`
`Hastreiter is not in the same field as Ciarcia is conclusory, as is Mr. Cook’s
`
`testimony. Neither explain why that may be so. In addition, Patent Owner
`
`has not addressed the second prong of the above test for analogous art. And,
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`importantly, during cross examination, Mr. Cook testified that the field of
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`“keypad design is inherently a field that people in remote controls are aware
`
`of.” Ex. 1053, 427:21–25. Such a statement would tend to support a finding
`
`that Hastreiter is analogous art. Hastreiter is concerned with circuitry
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`interconnections between a microprocessor and a keyboard data input
`
`assembly and even goes as far as to state that it is applicable for apparatuses
`
`19
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`IPR2014-01106
`Patent 5,255,313
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`that use keyboards. Ex. 1006, col. 1, ll. 5–10. The claimed invention recites
`
`an input means including a set of keys or pushbuttons for inputting
`
`commands into the remote control. Based on the record before us, we find
`
`that Hastreiter is analogous art, and, thus, are not persuaded by Patent
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`Owner’s arguments that Hastreiter is nonanalogous art.
`
`Patent Owner argues that Ciarcia “teaches away” from any
`
`combination with Hastreiter. PO Resp. 32–33. Patent Owner argues that the
`
`keypad arrangement disclosed in Hastreiter is unnecessarily complex to be
`
`used in Ciarcia’s remote, and that a person of ordinary skill in the art would
`
`not have looked to Hastreiter for a keyboard data input assembly that
`
`minimized the number of diode switches used (interconnections) because the
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`Ciarcia remote control only has six keys, such that minimizing
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`interconnections would not be a concern. Id. at 32–33; Ex. 2029 ¶¶ 81–90
`
`and 98. We are not persuaded by Patent Owner’s arguments.
`
`Hastreiter is not limited to only keyboards “having a large number of
`
`ha
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