`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 32
`Date: March 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01612
`Patent 7,589,642 B1
`____________
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
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`IPR2019-01612
`Patent 7,589,642 B1
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`In response to a Petition (Paper 2, “Pet.”) filed by Roku, Inc.
`(“Petitioner”), we instituted an inter partes review of claims 1–4, 6, 8, 9, and
`22–25 of U.S. Patent No. 7,589,642 B1 (Ex. 1001, “the ’642 patent”).
`Paper 7 (“Dec.”). During the trial, Universal Electronics, Inc. (“Patent
`Owner”) filed a Response (Paper 16, “PO Resp.”), to which Petitioner filed a
`Reply (Paper 20, “Reply”) and Patent Owner filed a Sur-reply (Paper 23,
`“Sur-reply”). An oral hearing was held with the parties, and a copy of the
`transcript was entered into the record. Paper 31 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 1–4, 6, 8, 9, and
`22–25 are unpatentable.
`
`
`I. BACKGROUND
`A. The ’642 Patent
`1. Overview
`The ’642 patent “relates generally to remote control devices and, more
`specifically, to relaying key code signals through a remote control device to
`operate an electronic consumer device.” Ex. 1001, 1:6–9. Each of such key
`code signals “corresponds to a function of the selected electronic device,
`such as power on, power off, volume up, volume down, play, stop, select,
`channel up, channel down, etc.” Id. at 1:25–28. A set of key codes
`associated with a particular electronic device is referred to as a “codeset.”
`Id. at 1:23–25. The number of key code signals to be used by a remote
`control device may be large, particularly when a single remote control
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`device is used to control multiple electronic devices. Id. at 1:39–47.
`Accordingly, the inventor of the ’642 patent sought a system “for enabling a
`remote control device to control a selected one of multiple different
`electronic consumer devices without requiring the codeset associated with
`the selected electronic consumer device to be stored on the remote control
`device.” Id. at 1:51–55.
`Figure 1 of the ’642 patent is reproduced below.
`
`
`Figure 1 illustrates a system for relaying a key code through a remote control
`device to an electronic consumer device. Id. at 3:1–3. System 10 includes
`remote control device 11, key code generator device 12 (shown as a set-top
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`box), first electronic consumer device 13 (shown as a video cassette recorder
`(“VCR”)), and second electronic consumer device 14 (shown as a television
`set). Id. at 3:5–8; 3:18–21, 3:27–28. With remote control device 11, a user
`responds to on-screen displays 15 of television set 14, generated by key code
`generator device 12, “to step through a sequence of menu screens to identify
`the codeset corresponding to the device that is to be controlled.” Id. at 3:12–
`16, 3:27–33. For example, system 10 may, in this way, identify the
`appropriate codeset to enable remote control device 11 to communicate with
`VCR 13 and television set 14. Id. at 3:27–35.
`An alternative embodiment uses an “autoscan functionality” in which
`the user is “prompted by successive screens on display 15 to push the power-
`on key of remote control device 11 multiple times.” Id. at 7:60–66. As the
`user repeatedly presses the power-on key, “key code generator device 12 in
`turn generates key codes using different codesets until the electronic
`consumer device performs a desired function,” such as turning on. Id. at
`8:6–10. The user is prompted to stop pressing the power-on key once the
`user sees the desired function being performed by first electronic consumer
`device 13. Id. at 8:10–13. “When the user stops pressing the power-on key,
`then the key code generator device 12 identifies the codeset of the last
`transmitted key code to be the codeset used by the electronic consumer
`device.” Id. at 8:15–18.
`The ’642 patent explains that, in some instances, key code generator
`device 12 is capable of communicating with remotely maintained database
`of codesets 39 over network 38, which may be the Internet. Id. at 8:32–35.
`A new codeset, such as may be associated with a new electronic consumer
`device introduced into the market, may thus be distributed from database 39
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`via network 38 and stored on a mass-storage hard disk within key code
`generator device 12. Id. at 8:35–43.
`After generating a key code, key code generator device 12 modulates
`the key code onto a carrier signal, such as an RF signal, to generate “first
`key code signal 19.” Id. at 4:35–37. Figure 5 of the ’642 patent is
`reproduced below.
`
`
`
`Figure 5 illustrates a twelve-bit key code modulated onto first key code
`signal 19 using pulse-width modulation. Id. at 4:66–67. Remote control
`device 11 receives first key code signal 19 on an RF transmission from key
`code generator device 12, and relays the key code to the appropriate
`electronic consumer device, such as VCR 13, in the form of second key code
`signal 22. Id. at 5:37–44. The electronic consumer device receives second
`key code signal 22, recovers the key code, and, if the key code is correct for
`the device, performs the function desired by the user. Id. at 5:64–6:1, 8:6–
`18.
`
`
`
`2. Illustrative Claims
`Independent claim 1 is illustrative of the challenged claims and is
`reproduced below.
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`1. A method comprising:
`
`(a) receiving a keystroke indicator signal from a remote
`control device, wherein the keystroke indicator signal indicates
`a key on said remote control device that a user has selected;
`
`(b) generating a key code within a key code generator
`device using the keystroke indic[a]tor signal;
`
`(c) modulating said key code onto a carrier signal,
`thereby generating a key code signal; and
`
`(d) transmitting said key code signal from said key code
`generator device to said remote control device.
`
`Ex. 1001, 10:11–21.
`Independent claim 2, reproduced below, is similar to independent
`claim 1, but recites transmitting the key code signal “to an electronic
`consumer device” instead of “to said remote control device.”
`2. A method comprising:
`(a) receiving a keystroke indicator signal from a remote
`control device, wherein the keystroke indicator signal indicates
`a ke[y] on said remote control device that a user has selected;
`(b) generating a key code within a key code generator
`device using the keystroke indic[a]tor signal;
`(c) modulating said key code onto a carrier signal,
`thereby generating a key code signal; and
`(d) transmitting said key code signal from said key code
`generator device to an electronic consumer device.
`
`Id. at 10:22–32.
`
`
`3. Prosecution History
`The application that matured into the ’642 patent was filed with a
`single independent method claim:
`1. A method comprising:
`(a) receiving a keystroke indicator signal from a remote
`control device;
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`(b) generating a key code within a key code generator
`device;
`(c) modulating said key code onto a carrier signal,
`thereby generating a key code signal; and
`(d) transmitting said key code signal from said key code
`generator device.
`
`Ex. 1002, 22. In a first, nonfinal Office Action, the Examiner rejected this
`claim for obviousness over the combination of U.S. Patent No. 5,963,624
`(“Pope”) and U.S. Patent No. 5,595,342 (“McNair”). Id. at 47. According
`to the Examiner, Pope teaches both the “receiving” and “generating”
`limitations of this original claim, but “is silent on teaching modulating the
`key code onto a carrier signal.” Id. Nevertheless, the Examiner found that
`McNair teaches that “the control signal is modulated and transmitted to the
`controlled apparatus as a conventional practice.” Id. In light of this
`teaching, the Examiner concluded that “[i]t would have been obvious to one
`of ordinary skill in the art to modulate the key code onto a carrier signal in
`Pope because modulation of the key code enables the key code signal to be
`transmitted wirelessly to the appliances and this also represents a
`conventional practice.” Id.
`In traversing this rejection, the Applicant argued that “Pope does not
`receive a keystroke indicator and then generate a key code” because the
`“appliance control codes are not generated within the base unit 12 of Pope.
`Instead, the appliance control codes are transmitted from the handset 10/50
`to the base unit 12, where they are translated into control signals.” Id. at 72.
`The Examiner considered this argument, but found it unpersuasive in a final
`Office Action, reiterating that “Pope teaches receiving a keystroke indicator
`signal which contains an indication of a key on the remote control device 10
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`that was pressed[, and] generating a key code (codes for communicating the
`control function to the appliances) within the code generator 12.” Id. at 88.
`After a further traversal and rejection of original independent claim 1,
`the Applicant appealed the decision to our predecessor, the Board of Patent
`Appeals and Interferences (“BPAI”). Id. at 116–119, 132–133, 134, 219–
`256. The BPAI reversed the Examiner with respect to the rejection of
`original claim 1, agreeing with the Applicant that “McNair does not describe
`modulating a key code, or any code, onto a carrier signal.” Id. at 308.
`Instead, the BPAI found that “McNair merely describes frequency
`modulation including frequency shift keying modulation.” Id. Concurrent
`with that finding, the BPAI also issued a new ground of rejection over Pope
`and U.S. Patent No. 4,005,428 (“Graham”):
`Although Pope does not describe modulating the keycode onto
`a carrier signal, attention is directed to Graham which describes
`modulating a digital code or binary code onto a carrier
`signal. . . . Graham describes that doing so offers the
`advantages of precluding unauthorized or accidental activation
`of a control associated with the receiving means and provides
`an exceptional degree of security and privacy. . . . It would
`have been obvious to one with ordinary skill in the art at the
`time the invention was made to modify the method of Pope to
`include modulating the key code onto a carrier signal since
`doing so offers the advantages of precluding unauthorized or
`accidental activation and provides an exceptional degree of
`security and privacy.
`
`Id. at 310–311.
`Subsequent to the BPAI’s appeal decision, the Applicant amended the
`“receiving” limitation of original claim 1 to recite that “the keystroke
`indicator signal indicates a key on said remote control device that a user has
`selected,” and amended the “generating” limitation to recite “using the
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`keystroke indicator signal.” Id. at 315. In doing so, the Applicant
`characterized the BPAI’s decision as based “on a broad interpretation of the
`claim term ‘keystroke indicator signal’” that rejected the narrower
`interpretation of “an indication of a selected key while precluding a control
`code,” for which the Applicant had advocated. Id. at 323. The Applicant
`stated that it “overcomes the new rejection by amending claim 1 explicitly to
`limit the scope of the term ‘keystroke indicator signal’ to indicate a key on a
`remote control device that a user has selected.” Id.
`The Examiner maintained the rejection because “[i]t would have been
`obvious to one with ordinary skill in the art at the time the invention was
`made to modify the method of Pope to include modulating the key code onto
`a carrier signal.” Id. at 328. But the Examiner also indicated at the same
`time that dependent claims reciting transmission of the key code signal “to
`said remote control device” or “to an electronic consumer device” were
`allowable but for their dependence from a rejected base claim. Id. The
`Applicant accordingly canceled claim 1 and presented those dependent
`claims in independent form, leading to allowance of those claims as issued
`independent claims 1 and 2, reproduced above. Id. at 333, 344–347.
`
`
`B. Evidence
`Petitioner relies on the following references:
`Mishra
`US 2001/0005197 A1
`June 28, 2001
`Dubil
`US 8,132,105 B1
`Mar. 6, 2012
`Rye
`US 2004/0080428 A1
`Apr. 29, 2004
`Caris
`US 7,562,128 B1
`July 14, 2009
`Skerlos
`US 4,426,662
`Jan. 17, 1984
`
`
`
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
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`In addition, Petitioner relies on Declarations by Samuel H. Russ,
`Ph.D. Exs. 1003, 1032. Dr. Russ was cross-examined by Patent Owner, and
`a transcript of his deposition was entered into the record. Ex. 2008. Patent
`Owner relies on a Declaration by Michael D. Sprenger, Ph.D.1 Ex. 2003.
`Dr. Sprenger was cross-examined by Petitioner, and a transcript of his
`deposition was entered into the record. Ex. 1033.
`
`
`35 U.S.C. §2
`
`References
`
`C. Instituted Grounds of Unpatentability
`Petitioner challenges claims 1–4, 6, 8, 9, and 22–25 on the following
`grounds. Pet. 3.
`Claim(s)
`Challenged
`1, 3, 4, 6, 8, 9
`2, 22–25
`1–4, 6, 8, 9, 22–25
`
`103(a)
`103(a)
`103(a)
`
`Mishra, Dubil
`Rye, Dubil
`Caris, Skerlos
`
`
`
`
`1 Petitioner contends that “Dr. Sprenger’s declaration includes many internal
`contradictions and lacks citation to any evidence supporting many of his
`claims,” and that “[t]his would not be the first time that Dr. Sprenger has
`made unsupported statements in a patent proceeding.” Reply 26–27
`(citations omitted). Petitioner accordingly asks that “Dr. Sprenger’s
`testimony should be given little to no weight.” Id. at 27. We find
`insufficient basis to broadly discount Dr. Sprenger’s testimony. Instead, we
`weigh his testimony in light of the evidence as a whole throughout this
`Decision. See Patent Trial and Appeal Board Consolidated Trial Practice
`Guide, 35 (Nov. 2019),
`https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended various provisions of 35 U.S.C. Because
`the ’642 patent was filed before March 16, 2013 (the effective date of the
`relevant amendments), the pre-AIA versions of those provisions apply.
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`D. Real Parties in Interest
`The parties identify only themselves as real parties in interest.
`Pet. 74; Paper 3, 2.
`
`
`E. Related Matters
`Both parties identify Universal Electronics, Inc. v. Roku, Inc.,
`No. 8:18-cv-01580 (C.D. Cal.) (“the related litigation”), as involving the
`’642 patent. Pet. 74; Paper 3, 2.
`The ’642 patent is also one of several patents owned by Patent Owner
`that are challenged by Petitioner in various petitions for inter partes review,
`including in IPR2019-01595, IPR2019-01608, IPR2019-01613,
`IPR2019-01614, IPR2019-01615, IPR2019-01619, IPR2019-01620, and
`IPR2019-01621. See Pet. 74–75; Paper 3, 2. The parties also note that the
`following applications claim the benefit of the filing date of the ’642 patent:
`U.S. Patent Appl. No. 12/462,526 (now U.S. Patent No. 8,004,389); U.S.
`Patent Appl. No. 13/068,820 (now U.S. Patent No. 9,355,553); U.S. Patent
`Appl. No. 15/153,095 (now U.S. Patent No. 9,911,325); U.S. Patent Appl.
`No. 15/864,339; and U.S. Patent Appl. No. 16/057,544. Pet. 74–75; Paper 3,
`3.
`
`In addition, the ’642 patent was the subject of IPR2014-01082 (“the
`earlier IPR”), in which institution of a trial was denied. See Ex. 1002, 369–
`379. Challenged independent claim 2 was among those claims also
`challenged in the earlier IPR, specifically for anticipation and single-
`reference obviousness by six different references. Id. at 372–373. In
`considering those earlier challenges, the Board found dispositive Patent
`Owner’s argument that “modulating a key code onto a carrier signal, thereby
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`generating a key code signal” was disclosed by none of the six references.
`Id. at 373.
`The shortcomings identified by the Board for each of the six
`anticipation challenges in the earlier IPR was the petitioner’s reliance on an
`inherency argument, namely that each of the asserted references inherently
`discloses modulating a key code onto a carrier signal by virtue of its
`disclosure of transmission of key code signals. Id. at 373–376. Specifically,
`the Board rejected conclusory testimony proffered by the petitioner as
`lacking sufficient support for “broad statements that transmission of codes
`requires modulation onto a carrier signal.” See id. at 376. The single-
`reference obviousness challenges suffered from a related deficiency, namely
`that the petitioner “appear[ed] to conflate obviousness with inherent
`anticipation and fail[ed] to provide a sufficient obviousness analysis.” Id. at
`376–377.
`
`
`II. ANALYSIS
`A. Legal Principles
`A claim is unpatentable for obviousness 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 skill in the art; and (4) when in evidence, objective
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`indicia of nonobviousness, i.e., secondary considerations.3 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`
`
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
`skill in the art” is a hypothetical construct, from whose vantage point
`obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`1998). “This legal construct is akin to the ‘reasonable person’ used as a
`reference in negligence determinations” and “also presumes that all prior art
`
`
`3 The parties do not address objective indicia of nonobviousness, which
`accordingly do not form part of our analysis. See Pet. 73 (“Petitioner is not
`aware of any alleged secondary considerations by Patent Owner. Petitioner
`believes that Patent Owner has not, to date, made any nonconclusory
`assertions of any secondary considerations of non-obviousness.”).
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`references in the field of the invention are available to this hypothetical
`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
`1993)).
`Supported by the testimony of Dr. Russ, Petitioner proposes that a
`person of ordinary skill in the art “would have a bachelor’s degree in
`electrical engineering or equivalent degree with two years of work
`experience relating to communications and consumer electronics.” Pet. 12–
`13 (citing Ex. 1003 ¶¶ 15–18). Patent Owner proposes instead that a person
`of ordinary skill in the art “would have had a bachelor’s degree which
`involved computer programming coursework, for example, electrical
`engineering, computer engineering, computer science, cognitive science,
`mechanical engineering, industrial engineering, or a similar degree, and at
`least one year of work experience in software programming, user interfaces,
`or human factors.” PO Resp. 10. According to Patent Owner, “[a]dditional
`education might substitute for some of the experience, and substantial
`experience might substitute for some of the educational background.” Id.
`We adopt Petitioner’s articulation. Although Patent Owner’s expert,
`Dr. Sprenger, believes Patent Owner’s statement “is more appropriately
`tailored to the subject matter area of the ’642 patent,” he also concedes that
`“the differences between the proposed definitions of a [person of ordinary
`skill in the art] by Petitioner and Patent Owner are relatively minor” such
`that those differences “do not affect any of [his] analysis.” Ex. 2003 ¶¶ 37,
`40. We also would reach the same conclusions expressed herein if we
`adopted Patent Owner’s expression of the level of ordinary skill.
`
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`C. Claim Construction
`The Board uses “the same claim construction standard that would be
`used to construe the claim in a civil action under 35 U.S.C. 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b)
`(2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
`(en banc). The specification may reveal a special definition given to a claim
`term by the patentee. Phillips, 415 F.3d at 1316. If an inventor acts as his or
`her own lexicographer, the definition must be set forth in the specification
`with reasonable clarity, deliberateness, and precision. Renishaw PLC v.
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
`The parties address the following terms.
`
`
`1. “key code”
`The parties agree that the term “key code,” which is recited in each of
`challenged independent claims 1 and 2, should be construed as “a code
`corresponding to the function of an electronic device, optionally including
`timing information.” Pet. 13; PO Resp. 11. This construction was adopted
`by the district court in the related litigation. Ex. 1010, 12. The district
`court’s construction is consistent with the ordinary and customary meaning
`of the phrase in light of the specification, and we adopt the proposed
`construction. See, e.g., Ex. 1001, 4:49–53.
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`2. “keystroke indicator signal”
`The parties nominally agree that the term “keystroke indicator signal,”
`which is recited in each of challenged independent claims 1 and 2, should be
`construed as “a signal, distinct from a key code, corresponding to a pressed
`key [on a remote control].” Pet. 14; PO Resp. 11–12 (alterations in
`original). The district court adopted this construction in the related
`litigation, as did we on a preliminary basis in our Institution Decision
`because we found it “consistent with the ordinary and customary meaning of
`the phrase in light of the Specification.” Ex. 1010, 12–13; Dec. 11.
`Nevertheless, Patent Owner “clarifies” that its agreement with this
`construction “means that the keystroke indicator signal cannot contain the
`claimed key code.” PO Resp. 12. Patent Owner contends that such an
`exclusion is not only “consistent with the ordinary meaning of ‘distinct from
`a key code’ and the specification,” but also consistent with an express
`disclaimer made during prosecution of the application that matured into the
`’642 patent. Id. (citing Ex. 1001, 7:67–8:3; Ex. 1002, 323). In addition,
`Patent Owner observes that “the claims require a ‘keystroke indicator signal’
`distinct from a ‘key code signal,’ so the terms cannot be defined the same.”
`Id. (citing Ex. 1001, 10:16–19; Helmsderfer v. Bodrick Washroom Equip.,
`Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008)).
`Petitioner does not dispute this clarification, which we find consistent
`both with the distinction embraced by the differences between a “key code”
`and a “keystroke indicator signal,” and with the distinction between those
`terms as recited in the challenged claims. Accordingly, we adopt the parties
`agreed construction, with Patent Owner’s clarification.
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`3. “key code signal”
`The term “key code signal” is recited in each of challenged
`independent claims 1 and 2. Ex. 1001, 9:18–21, 9:29–32. In the Institution
`Decision, we adopted as our preliminary construction the same construction
`adopted by the district court in the related litigation, namely “a signal
`containing a modulated key code.” Dec. 11–12 (citing Ex. 1010, 13–23).
`Patent Owner contends that such a construction “excludes a codeset from the
`same signal.” PO Resp. 12. According to Patent Owner, not only is such an
`exclusion consistent with the claim language and specification of the ’642
`patent, there was an “express prosecution disclaimer” that further supports
`the proposed exclusion. Id. at 12–13. We are not persuaded by either Patent
`Owner’s plain-meaning or prosecution-disclaimer arguments to incorporate
`its proposed exclusion into the construction of “key code signal.” Rather,
`we agree with Petitioner that the proposed exclusion improperly adds
`unsupported limitations to the construction. See Reply 3.
`First, Patent Owner contends that “[k]ey code is singular and distinct
`from a code set in the specification,” citing language from the Specification
`of the ’642 patent that clearly describes a key code as part of a codeset. PO
`Resp. 13 (citing Ex. 1001, 2:27–28 (“When the key code from one of the
`codesets . . .”), 4:25 (“. . . determines which key code of the codeset
`previously identified . . .”)). It is thus apparent from the cited passages that a
`signal carrying a codeset may also be a signal carrying a key code. Patent
`Owner provides insufficient reasoning based on the Specification passages it
`cites to support the exclusion of a codeset. See, e.g., Inphi Corp. v. Netlist,
`Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (quoting Santuarus, Inc. v. Par
`Pharm., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations
`
`17
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`
`are adequately supported when the specification describes a reason to
`exclude the relevant limitation.”)).
`Second, Patent Owner directs our attention to the Applicant’s
`statements made during prosecution to the effect that “Claim 2 recites
`transmitting a key code signal to the remote control device and does not
`recite transmitting a codeset to the remote control device.” PO Resp. 13
`(quoting Ex. 1002, 75–76 (emphasis by Patent Owner); citing Ex. 1002,
`241–242, 121). But the Federal Circuit has made clear that the standard for
`disavowal of full claim scope through prosecution history disclaimer is
`“exacting, requiring clear and unequivocal evidence that the claimed
`invention includes or does not include a particular feature.” Poly-America,
`L.P. v. API Industries, Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (citations
`omitted). “Ambiguous language cannot support disavowal.” Id. (citations
`omitted). The Applicant’s statements during prosecution do nothing more
`than reflect the language recited in the claim. They do not provide “clear
`and unequivocal evidence” of a disavowal by the Applicant of codeset from
`the signal.
`Third, Patent Owner contends that the claim language itself supports
`its proposed exclusion. PO Resp. 12–13 (citing Ex. 1001, 10:18–19, 10:65–
`66; Ex. 2008, 57:2–17). But we do not discern any such exclusion from the
`language Patent Owner highlights, namely “modulating said key code onto a
`carrier signal, thereby generating a key code signal” and “wherein said key
`code generated in (b) is part of a codeset.” Id. Similar to our discussion of
`the Specification above, a signal carrying a codeset may also be a signal
`carrying a key code and nothing in the plain language of the claim says
`otherwise.
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`IPR2019-01612
`Patent 7,589,642 B1
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`
`We accordingly construe “key code signal” as “a signal containing a
`modulated key code,” without the additional exclusion of a codeset from the
`same signal.
`
`
`4. “key code generator device”
`In the related litigation, the parties disputed whether “key code
`generator device,” which is recited in challenged each of independent
`claims 1 and 2, should be construed according to the provisions of 35 U.S.C.
`§ 112 ¶ 64 (“An element in a claim for a combination may be expressed as a
`means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be
`construed to cover the corresponding structure, material, or acts described in
`the specification and equivalents thereof.”). Ex. 1010, 23–24. In advocating
`for construction as such a means-plus-function limitation in the related
`litigation, Petitioner contended that “[t]he structure is indefinite due to lack
`of sufficient corresponding structure.” Id. In contrast, Patent Owner argued
`that the term is not governed by 35 U.S.C. § 112 ¶ 6 and should instead be
`construed as “an electronic consumer device, other than a remote control,
`that identifies a codeset and generates a key code from the identified
`codeset.” Id. As an alternative position, Patent Owner contended that “[t]o
`the extent 35 U.S.C. § 112(6) applies, the corresponding structure is a set-
`top box, television, a stereo radio, a digital video disk player, a video
`
`
`4 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 6, as 35 U.S.C.
`§ 112(f). Because the ’642 patent has a filing date prior to September 16,
`2012, the effective date of § 4(c) of the AIA, we refer to the pre-AIA version
`of 35 U.S.C. § 112. See AIA § 4(e).
`
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`cassette recorder, a personal computer, a set-top cable television box or a
`set-top satellite box and equivalents thereof.” Id.
`The absence of the word “means” in the phrase creates a rebuttable
`presumption that § 112 ¶ 6 does not apply. Williamson v. Citrix Online,
`LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). The district court found that
`“the presumption against means-plus-function claiming is overcome” and
`applied § 112 ¶ 6 to interpret “key code generator device.” Ex. 1010, 26. In
`its interpretation, the court found that “the relationship between the claimed
`components fails to provide information to conclude that the coined term
`‘key code generator device’ connotes sufficient structure.” Id. In doing so,
`the court determined that “the claimed function is to generate a key code.”
`Id.
`
`In considering the corresponding structure, the district court rejected
`Petitioner’s contention that the structure is indefinite. See id. at 29 (“The
`disclosure in the patent specification supports the conclusion that ‘key code
`generator device 12’ is a corresponding structure clearly linked to the recited
`function of ‘generat[ing] a key code.’” (alteration in original)). Instead, the
`district court arrived at its articulation of the corresponding structure by
`observing that “[t]he disclosure for ‘key code generator device 12’ explains
`that it generates a key code by (1) identifying (or being informed of) a
`codeset usable to communicate with the electronic device and (2) identifying
`the key code corresponding to a pressed key for that codeset.” Id. Because,
`according to the district court, “this disclosure effectively provides a
`software-like algorithm describi
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