Trials@uspto.gov Paper 7
`571-272-7822 Date: April 16, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
`
`
`
`
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`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01614
`Patent 9,911,325 B2
`_____________
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`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822 Date: April 16, 2020
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01614
`Patent 9,911,325 B2
`_____________
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
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`IPR2019-01614
`Patent 9,911,325 B2
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`I. INTRODUCTION
`Roku, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–5 and 7 (the “challenged claims”) of U.S.
`Patent No. 9,911,325 B2 (Ex. 1001, “the ’325 patent”). Universal
`Electronics, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a)
`(2012); see 37 C.F.R. § 42.4 (2019). Taking into account the arguments and
`evidence presented in Patent Owner’s Preliminary Response, we determine
`that the information presented in the Petition establishes that there is a
`reasonable likelihood that Petitioner would prevail in showing the
`unpatentability of all the challenged claims. Accordingly, we institute an
`inter partes review of all challenged claims (1–5 and 7) of the ’325 patent,
`based on all grounds raised in the Petition.
`
`II. BACKGROUND
`A. Related Matters
`According to Petitioner, the ’325 patent is the subject of the following
`district court litigation: Universal Electronics, Inc. v. Roku, Inc., No. 8:18-
`cv-01580 (C.D. Cal.). Pet. 56. Patent Owner identifies the same case as a
`related matter. Paper 3, 2. The ’325 patent is 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-
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`01612, IPR2019-01613, IPR2019-01615, IPR2019-01619, IPR2019-01620,
`and IPR2019-01621. See id.
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`B. The ’325 Patent
`The ’325 patent, titled “Relaying Key Code Signals Through a
`Remote Control Device,” issued March 6, 2018, from U.S. Patent
`Application No. 15/153,905, filed May 13, 2016 (“the ’905 application”).
`Ex. 1001, codes (21), (22), (45), (54). The ’905 application is a continuation
`of U.S. Patent Application No. 13/068,820, filed May 21, 2011 (issued as
`U.S. Patent No. 9,355,553), which is a continuation of U.S. Patent
`Application No. 12/462,526, filed August 4, 2009 (issued as U.S. Patent
`No. 8,004,389), which, in turn, is a continuation of U.S. Patent Application
`No. 10/737,029, filed December 16, 2003 (issued as U.S. Patent
`No. 7,589,642). Id. at code (63), 1:7–14.
`The ’325 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.” Id. at 1:18–21. 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 1:36–41. A set of key codes
`associated with a particular electronic device is referred to as a “codeset.”
`Id. at 1:36–38. The number of key code signals may be large, particularly
`when a single remote-control device is used to control multiple electronic
`devices. Id. at 1:54–62. Accordingly, the inventor of the ’352 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
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`associated with the selected electronic consumer device to be stored on the
`remote control device.” Id. at 1:66–2:3.
`Figure 1 of the ’352 patent is reproduced below.
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`Figure 1 illustrates a system for relaying a key code through a remote control
`device to an electronic consumer device. Id. at 3:19–21.
`As depicted in Figure 1, system 10 includes remote control device 11,
`key code generator device 12 (shown as a set-top 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
`3:23–27, 3:37–40, 3:47–48. With remote control device 11, a user responds
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`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 3:31–
`35, 3:47–53. 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 3:47–55.
`The ’325 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 8:60–63.
`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
`via network 38 and stored on a mass-storage hard disk within key code
`generator device 12. Id. at 8:64–9:5.
`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 4:56–59. Figure 5 of the ’352 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 5:21–23.
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`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 5:59–66. 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 6:20–25.
`In an alternative embodiment, the electronic consumer device is
`controlled by an RF key code signal transmitted directly from key code
`generator device 12. Id. at 6:31–33. In this embodiment, the electronic
`consumer device, e.g., television set 14, has an RF receiver and is capable of
`receiving RF key code signals. Id. at 6:58–59. When the user presses a key
`on remote control device 11 associated with a desired function of television
`set 14, a corresponding RF keystroke indicator signal is transmitted to key
`code generator device 12. Id. at 6:40–47. Key code generator device 12
`then determines the appropriate key code that corresponds to the pressed
`key, generates third key code signal 25 by modulating the key code onto an
`RF carrier signal, and transmits third key code signal 25 directly to
`television set 14. Id. at 6:48–61. Third key code signal 25 is generated
`using the same modulation technique used for generation of first key code
`signal 19 described above. Id. at 6:52–54. Upon receiving third key code
`signal 25, television set 14 recovers the key code from the received signal
`and performs the function desired by the user. Id. at 6:61–65.
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`C. Illustrative Claim
`Independent claim 1 is illustrative of the challenged claims and is
`reproduced below.
`1. A first device for transmitting a command to control a
`functional operation of a second device, the first device comprising:
`a receiver;
`a transmitter;
`a processing device coupled to the receiver and the transmitter;
`and
`a memory storing instructions executable by the processing
`device, the instructions causing the processing device to:
`generate a key code using a keystroke indicator received from a
`third device in communication with first device via use of the
`receiver, the keystroke indicator having data that indicates an
`input element of the third device that has been activated;
`format the key code for transmission to the second device; and
`transmit the formatted key code to the second device in a key
`code signal via use of the transmitter;
`wherein the generated key code comprises a one of a plurality of
`key code data stored in a codeset, wherein the one of the
`plurality of key code data is selected from the codeset as a
`function of the keystroke indicator received from the third
`device, wherein each of the plurality of key code data stored
`in the codeset comprises a series of digital ones and/or digital
`zeros, and wherein the codeset further comprises time
`information that describes how a digital one and/or a digital
`zero within the selected one of the plurality of key code data
`is to be represented in the key code signal to be transmitted to
`the second device.
`Ex. 1001, 10:42–11:5.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 2–3):
`
`Claims Challenged
`1, 2, 3, 5, 7
`1–5
`
`35 U.S.C. §
`103(a)1
`103(a)
`
`References
`Rye,2 Skerlos3
`Caris,4 Dubil5
`
`Petitioner supports its challenge with a declaration from Dr. Samuel H. Russ
`(Ex. 1003, “the Russ Declaration”).
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`We begin our analysis by addressing the level of ordinary skill in the
`art. Citing the testimony of Dr. Russ as support, Petitioner proposes that a
`person of ordinary skill in the art at time of the priority date of the ’325
`patent “would have a bachelor’s degree in electrical engineering or
`equivalent degree with two years of work experience relating to
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
`’325 patent has an effective filing date prior to the effective date of the
`applicable AIA amendment, we refer to the pre-AIA version of § 103.
`2 U.S. Patent Application Pub. No. 2004/0080428 A1, published Apr. 29,
`2004 (Ex. 1005, “Rye”).
`3 U.S. Patent No. 4,426,662, filed Jan. 18, 1982, issued Jan. 17, 1984
`(Ex. 1006, “Skerlos”).
`4 U.S. Patent No. 7,562,128 B1, filed Sept. 1, 2000, issued July 14, 2009
`(Ex. 1007, “Caris”).
`5 U.S. Patent No. 8,132,105 B1, filed Oct. 10, 2000, issued Mar. 6, 2012
`(Ex. 1008, “Dubil”).
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`communications and consumer electronics.” Pet. 8 (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.”
`Prelim. Resp. 4. 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.
`For purposes of this Decision, we adopt Petitioner’s articulation.
`Although Patent Owner acknowledges Petitioner’s statement, id. at 5, Patent
`Owner provides no explanation for the more specific requirements it sets
`forth for work experience. In addition, unlike Petitioner’s proposal, Patent
`Owner’s statement is not supported by testimonial evidence. We note,
`though, that for the limited purpose of determining whether to institute an
`inter partes review, we would reach the same conclusion under either
`proposed standard.
`
`B. Claim Construction
`For petitions filed on or after November 13, 2018, as is the case here,6
`we apply the same claim construction standard that would be used in a civil
`action under 35 U.S.C. § 282(b), following the standard articulated in
`
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`6 The filing date accorded to the Petition is September 18, 2019. Paper 5, 1.
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
`§ 42.100(b) (2019).
`In applying such standard, claim terms are generally given their
`ordinary and customary meaning, as would be understood by a person of
`ordinary skill in the art, at the time of the invention and in the context of the
`entire patent disclosure. Phillips, 415 F.3d at 1312–13. “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, 415 F.3d at 1312–17).
`
`1. “key code”
`The parties agree that the term “key code” recited in challenged
`independent claim 1 should be construed as “a code corresponding to the
`function of an electronic device, optionally including timing information.”
`Pet. 9; Prelim. Resp. 6–7. This construction was adopted by the district
`court in the related litigation. Ex. 1009, 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 for purposes of
`this Decision. See, e.g. Ex. 1001, 5:3–7.
`
`2. “keystroke indicator signal”
`The parties agree that the term “keystroke indicator signal” recited in
`claim 1 should be construed as “a signal, distinct from a key code,
`corresponding to a pressed key [on a remote control].” Pet. 9; Prelim. Resp.
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`7 (alteration in original). This construction was adopted by the district court
`in the related litigation. Ex. 1009, 12–13 (alteration in original). 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 for purposes of this Decision. See, e.g., Ex. 1001, 4:4–11.
`
`3. “key code signal”
`In the related litigation, the parties proposed different constructions of
`the term “key code signal” recited in challenged independent claim 1.
`Ex. 1009, 13. The district court provided a construction that differs from
`both parties’ proposed constructions, namely “a signal containing a
`modulated key code.” Id. at 13–23. Patent Owner proposes that this
`construction be adopted for this proceeding. Prelim. Resp. 7–8. Petitioner
`does not specifically advocate for a particular construction but contends that
`the challenged claims are unpatentable both under the district court’s
`construction and under the construction proposed by Patent Owner in the
`related litigation, i.e. “a signal containing a key code.” Pet. 9.
`The district court’s construction is consistent with the ordinary and
`customary meaning of the phrase in light of the Specification, and we adopt
`it for purposes of this Decision. See Ex. 1009, 13–23.
`
`C. Obviousness over Rye and Skerlos
`In this asserted ground of obviousness, Petitioner contends that claims
`1, 2, 3, 5, and 7 are unpatentable under § 103(a) over the combination of Rye
`and Skerlos. Pet. 10–35. Petitioner provides detailed explanations and
`specific citations to the prior art indicating where in the references the
`claimed features are disclosed or explaining how the differences between the
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`claimed subject matter and the prior art are such that the subject matter
`would have been obvious to a person of ordinary skill in the art. Id. In
`addition, Petitioner relies upon the Russ Declaration (Ex. 1003) to support
`its positions. Id. For the reasons discussed below, we determine that, on the
`present record, the information presented shows a reasonable likelihood that
`Petitioner would prevail on this ground with respect to all challenged claims.
`
`1. Relevant Principles of Law
`A 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 the 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) where in evidence, so-called secondary
`considerations.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`analyze the asserted ground based on obviousness with the principles
`identified above in mind.
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`7 The parties do not present arguments or evidence related to such secondary
`considerations. Therefore, secondary considerations do not constitute part of
`our analysis in this Decision.
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`2. Overview of Rye (Ex. 1005)
`Rye describes “a remote control system for use in controlling the
`operation of a multi-brand audiovisual component system.” Ex. 1005 ¶ 12.
`Figure 2 of Rye is reproduced below.
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`Figure 2 is a schematic diagram of remote control unit 10, which includes
`key matrix 18, microprocessor 20, modulator-transmitter 22, and antenna 24.
`Id. ¶ 22.
`As described in Rye, microprocessor 20 stores a plurality of binary
`control codes corresponding to various functions of the audiovisual
`components to be controlled by operation of remote control unit 10. Id.
`“The binary control codes stored in the microprocessor 20 are generic codes
`in that they are not specific for any particular brand or model of audiovisual
`product.” Id. In response to user operation of a push button on remote
`control unit 10, key matrix 18 produces a memory address signal that is
`applied to microprocessor 20. Id. The binary coded signal generated by
`microprocessor 20 is applied to modulator-transmitter 22 for radio-
`frequency modulation and transmission by antenna 24. Id.
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`Figure 3 of Rye is reproduced below.
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`Figure 3 is a schematic diagram of addressable transceiver 30, which
`receives binary coded signals transmitted by antenna 24 of Figure 2. Id. “In
`overview, those signals are converted in transceiver 30 to corresponding
`binary coded infrared (IR) signals, which are then transmitted over-the-air to
`the selected audiovisual component to control its operation.” Id. ¶ 23.
`As illustrated in the drawing, transceiver 30 includes RF antenna 32,
`RF receiver 34, demodulator 36, main processor 38 (with memory 40),
`infrared microprocessor 42 (with memories 44, 46), and infrared emitter 48.
`Id. ¶¶ 23–25. Memory 40 stores addresses used by main processor 38 in
`identifying particular audiovisual components to be controlled. Id. ¶¶ 23–
`24. Memory 44 “contains the remote control codes for all brands . . . and
`models of commercially available audiovisual components.” Id. ¶ 24.
`Remote control codes stored in memory 46 “are derived from code library
`memory 44 through the microprocessor 42 [and] may be periodically
`supplemented or otherwise modified by the user when a new audiovisual
`component is acquired or a currently owned component is discarded.” Id.
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`In operation, radio-frequency binary-coded control and address
`signals transmitted by antenna 24 are received at antenna 32 and receiver 34,
`and demodulated by demodulator 36, such that main microprocessor 38
`generates a signal applied to infrared microprocessor 42 after comparing the
`address portion to product codes stored in memory 40. Id. ¶ 26. Infrared
`processor 42 converts the control portion of the signal for compatibility with
`the operating binary code of the audiovisual component whose remote-
`control code is obtained from memory 46, and transmits that signal to the
`audiovisual component. Id. ¶ 27.
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`3. Overview of Skerlos (Ex. 1006)
`Skerlos “relates to remote control receivers and more specifically is
`directed to an infrared (IR) remote control detector/decoder providing
`improved noise immunity particularly adapted for use with a television
`receiver.” Ex. 1006, 1:5–9. In particular, Skerlos describes a remote-control
`system in which pulse code modulated (“PCM”) output signals are generated
`in response to user-operated controls. Id. at 2:66–3:2.
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`Figures 1A–1C of Skerlos are reproduced below.
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`Figures 1A–1C of Skerlos depict the pulse train of a transmitted control
`signal in Skerlos’s IR remote control system. Id. at 2:48–51.
`Figure 1A shows the output waveform of a transmitted IR signal,
`which is repeated every 180 milliseconds. Id. at 3:20–22. Each series of
`pulses is pulse code modulated as illustrated in Figure 1B, which shows in
`expanded form the arrangement of pulse code modulation for an individual
`pulse train. Id. at 3:22–25. Figure 1C shows pulses that represent the
`ON/OFF pulsing of the IR transmitter’s light emitting diodes (LEDs). Id. at
`3:31–33.
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`4. Claim 1
`Petitioner challenges independent claim 1 as unpatentable under
`35 U.S.C. § 103(a) over Rye and Skerlos. Pet. 13–32. In addressing the
`recited limitations, Petitioner draws a correspondence between (1) the
`recited “first device” and Rye’s transceiver 30 (id. at 13–14 (citing Ex. 1005,
`Abstr., ¶ 23, Figs. 2, 3)); (2) the recited “second device” and Rye’s selected
`audiovisual component (id. at 14 (citing Ex. 1005, Abstr., ¶ 23, Figs. 2, 3));
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`and (3) the recited “third device” and Rye’s remote control unit 18 (id. at
`19–20 (citing Ex. 1005 ¶ 21, Figs. 2, 3)). Petitioner further draws a
`correspondence between (4) the recited “receiver” of the “first device” and
`Rye’s RF receiver 34 within Rye’s transceiver 30 (id. at 15 (citing Ex. 1005
`¶ 23, Fig. 3)); (5) the recited “transmitter” of the “first device” and Rye’s IR
`emitter 48 (id. at 15–16 (citing Ex. 1005 ¶¶ 23, 25, Fig. 3)); (6) the recited
`“processing device coupled to the receiver and the transmitter” and Rye’s
`main processor 38 and IR processor 42 (id. at 16–18 (citing Ex. 1005 ¶¶ 23–
`25, Fig. 3)); and (7) the recited “memory storing instructions executable by
`the processing device” and Rye’s address memory 40, memory for code
`lookup table 46, and code library memory 44 (id. at 18–19 (citing Ex. 1005
`¶¶ 23–25, Fig. 3)). In addition, Petitioner maps the recited “keystroke
`indicator received from a third device” to Rye’s radio-frequency binary
`coded signal transmitted from antenna 24 of remote control unit 18 to
`transceiver 30 (id. at 20–21 (citing Ex. 1005 ¶¶ 21–23, Fig. 2)) and maps the
`recited “key code” to a control code identified by Rye’s transceiver 30 (id. at
`21 (citing Ex. 1005 ¶¶ 23, 24, 27–31, 36–38, Fig. 3)). In making these
`correspondences or mappings, Petitioner relies generally on Rye’s described
`functionality to meet the limitations of claim 1 requiring the recited
`“processing device” to “generate a key code using a keystroke indicator
`received from a third device” and “transmit the . . . key code to the second
`device in a key code signal.” Id. at 21 (citing Ex. 1005 ¶¶ 23, 24, 27–31,
`36–38, Fig. 3), 27 (citing Ex. 1005 ¶¶ 25, 27).
`For the limitation requiring the recited “processing device” to “format
`the key code for transmission to the second device,” Petitioner relies on the
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`combination of Rye with Skerlos, arguing that the proposed combination of
`Rye with Skerlos teaches “format[ting] the key code for transmission” by
`describing “formatting of a key code [for transmission] by modulating the
`key code onto a carrier signal.” Id. at 22–25.
`First, Petitioner asserts that the Specification of the ’325 patent does
`not use the term “format” or provide an explicit definition for “formatting” a
`key code for transmission. Id. at 22 (citing Ex. 1003 ¶ 134). Petitioner
`argues that the Specification instead describes modulating a key code onto a
`carrier signal to transmit the key code to the second device, such as a
`television set. Id. (citing Ex. 1001, 6:48–65). For instance, Petitioner
`asserts that Figure 5 of the ’325 patent depicts a “formatted” version of a key
`code generated by modulating the key code (i.e., modulating the binary
`values of ones and zeros representing the key code) onto a carrier signal. Id.
`at 22–23 (citing Ex. 1001, 4:47–55, 5:21–27, 6:48–65, Figs. 3, 5). Petitioner
`argues, therefore, that a person of ordinary skill in the art would have
`understood from these disclosures in the Specification that the recited
`“format[ting] the key code for transmission” would encompass “using the
`well-known technique of modulating the key code onto a carrier signal to
`prepare the key code for transmission.” Id. at 23 (citing Ex. 1001, 1:48–53;
`Ex. 1003 ¶¶ 134–136).
`Petitioner asserts that Rye teaches this type of formatting and
`transmission through the reference’s use of an “IR emitter” because one of
`ordinary skill the art would have understood that transmission of a key code
`using Rye’s “IR emitter” would have been accomplished by modulating the
`key code onto an infrared carrier signal. Id. (citing Ex. 1005 ¶ 25; Ex. 1003
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`¶ 137). Petitioner acknowledges, however, that Rye does not explicitly
`describe the “operational details” of how to modulate a key code onto an
`infrared carrier signal. Id. at 23. To ascertain such operational details,
`Petitioner contends that a person of ordinary skill in the art would have
`looked to references such as Skerlos, which describes a binary modulation
`scheme known as “pulse code modulation (PCM)” used to format or arrange
`the binary remote control signals (i.e., arrange the binary values of ones and
`zeros representing the key code) for IR signal transmission. Id. at 23–25
`(citing Ex. 1006, 2:12–20, 2:68–3:8, 3:20-36, Figs. 1A–1C; Ex. 1003
`¶¶ 137–139, 104–111).
`Patent Owner disputes Petitioner’s contentions and asserts that neither
`Rye nor Skerlos discloses “formatting a key code for transmission to another
`device.” Prelim. Resp. 11–12. But Patent Owner has not, at this time,
`proposed any construction of “formatting a key code for transmission” or
`otherwise sufficiently described flaws in Petitioner’s position.
`We note that the language of other limitations of claim 1 appears to
`support Petitioner’s position. See Brookhill-Wilk 1, LLC. v. Intuitive
`Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003) (“While certain terms
`may be at the center of the claim construction debate, the context of the
`surrounding words of the claim also must be considered in determining the
`ordinary and customary meaning of those terms.”). In particular, claim 1
`recites that “the codeset further comprises time information that describes
`how a digital one and/or a digital zero within the selected one of the
`plurality of key code data is to be represented in the key code signal to be
`transmitted to the second device.” Ex. 1001, 11:1–5 (emphases added).
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`This language indicates or suggests that the recited “format[ting] the key
`code for transmission to the second device” is about “how a digital one
`and/or a digital zero . . . of [a] key code . . . is to be represented in the key
`code signal to be transmitted to the second device,” which is described in the
`“time information” included in the codeset.
`Turning to the Specification, the ’325 patent describes that the “timing
`information” in the codesets “describes how the key codes should be
`modulated onto carrier signals to generate key code signals.” Id. at 1:48–53
`(emphases added). That is, the Specification explains that the “time
`information” in the codeset recited in claim 1 that describes arranging digital
`ones and digital zeros of a key code in a key code signal for transmission—
`i.e., arranging a key code into a format of a signal for transmission—is the
`same information that describes “modulating” the key code onto carrier
`signals for transmission.
`Thus, for purposes of this Decision, we agree with Petitioner that
`“format[ting] the key code for transmission” recited in claim 1 encompasses
`“modulating the key code onto a carrier signal to prepare the key code for
`transmission.” Under this claim interpretation, we agree with Petitioner that
`Skerlos’s use of “pulse code modulation (PCM)” to format or arrange binary
`remote control signals for IR signal transmission teaches the limitation
`reciting “format the key code for transmission to the second device.”
`To the extent Patent Owner argues that neither Rye nor Skerlos uses
`the word “format,” we are not persuaded by Patent Owner’s argument
`because “the [prior art] reference need not satisfy an ipsissimis verbis test,”
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`i.e., identity of terminology is not required, to teach a claim limitation. In re
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
`On this record, for purposes of this Decision, Petitioner makes a
`sufficient showing that the combination of Rye and Skerlos teaches a
`processing device programmed to “format the key code for transmission to
`the second device,” as recited in claim 1.
`Patent Owner also asserts that Petitioner does not establish the
`combination of Rye and Skerlos discloses the limitation reciting “transmit
`the formatted key code to the second device.” Prelim. Resp. 11–12. Patent
`Owner’s argument, however, is predicated on its assertion that the
`combination of Rye and Skerlos does not teach the recited “formatted key
`code.” Id. (citing Prelim. Resp. § IV.A.1.a.). For the same reasons
`discussed above, for purposes of this Decision, we determine that Petitioner
`makes a sufficient showing that the combination of Rye and Skerlos teaches
`the “formatted key code” recited in claim 1. Thus, based on the record
`presented, Petitioner establishes sufficiently that the combination of Rye and
`Skerlos teaches limitation reciting “transmit the formatted key code to the
`second device.” Pet. 27 (citing Ex. 1005 ¶¶ 25, 27).
`In addition, for the reasons similar to those discussed above, Petitioner
`demonstrates sufficiently that the combination of Rye and Skerlos teaches
`the limitations reciting “wherein the codeset further comprises time
`information that describes how a digital one and/or a digital zero within the
`selected one of the plurality of key code data is to be represented in the key
`code signal to be transmitted to the second device” (id. at 29–32 (citing
`Ex. 1005 ¶¶ 15, 16, 23, 25, 27; Ex. 1006, 2:68–3:8, 3:16–52, 6:12–14, 6:27–
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`30, Figs. 1A–1C)) and “wherein the generated key code comprises a one of a
`plurality of key code data stored in a codeset, wherein the one of the
`plurality of key code data is selected from the codeset as a function of the
`keystroke indicator received from the third device, wherein each of the
`plurality of key code data stored in the codeset comprises a series of digital
`ones and/or digital zeros” (id. at 27–29 (citing Ex. 1005 ¶¶ 15, 16, 23, 24,
`25, 27, 38)).
`We also find that Petitioner articulates sufficient rationale for
`combining the respective teachings of Rye and Skerlos under the standard
`applicable at this stage of the proceeding. As noted above, Petitioner
`provides testimonial evidence supporting Petitioner’s position that a person
`of ordinary skill in the art would have been motivated to combine Skerlos
`with Rye to ascertain the “operational
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