Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 12
`
`
` Entered: February19, 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 IPR2014-01146
`Patent 8,243,207 B2
`__________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM A. CAPP, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`571-272-7822
`
`
`
` Paper 12
`
`
` Entered: February19, 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 IPR2014-01146
`Patent 8,243,207 B2
`__________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM A. CAPP, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`Case IPR2014-01146
`Patent 8,243,207 B2
`
`
`Petitioner Universal Remote Control, Inc. filed a Request for
`
`Rehearing (Paper 11, “Req.”) in connection with the Decision on Institution
`
`(Paper 9, “Decision”). Petitioner contends that we erred in denying
`
`institution of inter partes review of claim 12 of the ’207 patent on grounds
`
`of anticipation and obviousness with respect to the Dubil reference. Req. 1.
`
`In determining whether to institute an inter partes review, the Board
`
`may “deny some or all grounds for unpatentability for some or all of the
`
`challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on
`
`petition, the Board will review the decision for an abuse of discretion. See
`
`37 C.F.R. § 42.71(c). The party requesting rehearing has the burden of
`
`showing the decision should be modified, and “[t]he request must
`
`specifically identify all matters the party believes the Board misapprehended
`
`or overlooked.” 37 C.F.R. § 42.71(d).
`
`For the reasons stated below, Petitioner’s Request for Rehearing is
`
`denied.
`
`Analysis
`
` In our Decision, we determined that the limitation in claim 12
`
`directed to signal(s) transmitted from the controlling device to the
`
`entertainment device having data indicative of an appliance is not inherently
`
`satisfied by Dubil. Decision, 13. We stated that it was possible that Dubil’s
`
`remote 150 configures its AV system by doing nothing more than sending
`
`separate signals to satellite 115, VCR 113, and Television 110 without any
`
`of those separate signals containing data regarding a configuration
`
`interrelationship between and among those three AV system components.
`
`Id.
`
` 2
`
`
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`Petitioner argues that, even if Dubil operates in accordance with the
`
`above description, it nevertheless satisfies the claim limitation in question.
`
`Req. 2. This is not the argument that Petitioner made in its Petition. In its
`
`original Petition, Petitioner argued that:
`
`In the '831 system, for VCR 113 (the entertainment device) to
`be configured to use the desired input and output devices
`(appliances) according to the selected activity, VCR 113 must
`receive signals from the remote control (controlling device) that
`indicate the appliances (input or output devices) to be used in
`the configuration. Id.
`
`Petition (Paper 1), 23. Now, Petitioner argues that Dubil’s VCR is not only
`
`the “entertainment device” of claim 12, but is also an “appliance,” so that
`
`signals to Dubil’s VCR (the entertainment device) have data “indicative of
`
`an appliance.” Req. 2-3. Petitioner does not identify where this alternative
`
`theory was presented in the Petition. The Board’s governing rule requires
`
`that a Request for Rehearing specifically identify the place where each
`
`matter was previously addressed. See 37 C.F.R. § 42.71(d). A Request for
`
`Rehearing is not an appropriate place for presenting new, alternative theories
`
`of unpatentability that could have been presented in an initial Petition.
`
`Substantively, however, Petitioner’s new theory is entirely without
`
`merit. The context of claim 12 requires that the “entertainment device” and
`
`an “appliance” are separate and distinct entities. Ex. 1001, claim 12. Thus,
`
`signals transmitted to the entertainment device having data indicative of an
`
`appliance does not refer to data indicative of the entertainment device itself.
`
`Petitioner next argues that the transmission of three separate signals,
`
`i.e., to an entertainment device, an input appliance, and an output appliance
`
`respectively, satisfies the claim limitation in question. Req. 2. Again, this
`
` 3
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`theory was not presented in the Petition and thus also contravenes Rule
`
`42.71(d).
`
`Notwithstanding, Petitioner’s new “three separate signal” theory is
`
`also without merit. Petitioner states that the signals sent to Dubil’s TV and
`
`Satellite are also received by Dubil’s VCR. Req. 3. Petitioner cites no
`
`evidence to support this statement. Petitioner offers neither evidence nor
`
`technical reasoning to explain how or why a signal that is sent to one device
`
`is necessarily received by some other device.
`
`Petitioner next argues that the Board overlooked its discussion of
`
`obviousness at page 23 of the Petition. Req. 4. At page 23, Petitioner
`
`merely offers one conclusory sentence that: “To the extent there is an
`
`assertion that the '831 publication does not inherently disclose this
`
`limitation, a person of ordinary skill would understand that the claimed "user
`
`selection" is obvious based on the ’831 disclosure itself.” Petition, 23.
`
`Petitioner’s evidentiary support for this conclusory statement is paragraph 39
`
`of the Geier Declaration. Id. Mr. Geier’s testimony is equally conclusory:
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`“To the extent this feature is not inherent, it would have been obvious to one
`
`skilled in the art reading the ’831 publication . . .” Ex. 1003, ¶ 39.
`
`Here, Petitioner presents an obviousness ground over a single prior art
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`reference, Dubil. Petitioner never clearly articulates the differences between
`
`Dubil and the claimed invention, nor does Petitioner clearly articulate, much
`
`less provide supporting evidence for, how or why a practitioner of ordinary
`
`skill would have modified Dubil to achieve the claimed invention.
`
`With respect to motivation to modify the prior art to achieve the
`
`claimed invention, Mr. Geier merely states, in conclusory fashion, that it
`
`would have been obvious to transmit signals from the controlling device to
`
` 4
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`the entertainment device having data indicative of an appliance: “since the
`
`system described therein is specifically intended to allow a user to control a
`
`home theatre system, including the selected components therein through one
`
`or more signals from the remote control.” Ex. 1003, ¶ 39. This is
`
`insufficient to satisfy the threshold standard for institution of a trial. As we
`
`explained in our Decision, an entertainment device with one input appliance
`
`and one output appliance can be configured by simply transmitting separate
`
`signals to each respective component without any of those signals containing
`
`data regarding a configuration relationship between and among the three
`
`components. Decision, 13. Mr. Geier’s testimony does not amount to a
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`threshold showing that a person of ordinary skill in the art would have
`
`modified Dubil’s system so that data indicative of an appliance would have
`
`been transmitted from the controlling device to the entertainment device.
`
`In short, we did not overlook page 23 of the Petition, rather we
`
`carefully reviewed it and found it insufficient to meet the threshold
`
`requirement of a reasonable likelihood of prevailing. 35 U.S.C. § 314(a).
`
`
`
`Conclusion
`
`Petitioner’s Request for Rehearing is DENIED.
`
`
`
` 5
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`PETITIONER:
`
`Douglas A. Miro
`dmiro@ostrolenk.com
`Peter H. Kang
`pkang@sidley.com
`Theodore W. Chandler
`tchandler@sidley.com
`Ferenc Pazmandi
`fpazmandi@sidley.com
`Keith J. Barkaus
`kbarkaus@ostrolenk.com
`
`PATENT OWNER:
`
`Eric J. Maiers
`maierse@gtlaw.com
`Michael A. Nicodema
`nicodemam@gtlaw.com
`James J. Lukas
`lukasj@gtlaw.com
`Robbie R. Harmer
`harmerr@gtlaw.com
`
`
`
` 6
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