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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ROKU, INC.,
`Petitioner
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`v.
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`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
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`IPR2019-01614
`Patent No. 9,911,325 B2
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`PATENT OWNER UNIVERSAL ELECTRONICS, INC.’S
`NOTICE OF APPEAL
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`
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314
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`

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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
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`Universal Electronics Inc. (“UEI”) hereby appeals to the United States Court of
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`Appeals for the Federal Circuit from the Final Written Decision entered on April 13,
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`2021 (Paper 31), and from all underlying findings, determinations, rulings, opinions,
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`orders, and decisions regarding U.S. Patent No. 9,911,325. A copy of the Final
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`Written Decision is attached.
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`
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), UEI further indicates that the
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`issues on appeal include, but are not limited to, the Patent Trial and Appeal Board’s
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`determination of the unpatentability of Claims 1-5 of UEI’s U.S. Patent No.
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`9,911,325 under 35 U.S.C. § 103.
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`Copies of this Notice of Appeal are being filed simultaneously with the Patent
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`Trial and Appeal Board. In addition, three copies of this Notice Appeal, along with
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`the required docketing fees, are being filed with the Clerk’s Office for the United
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`States Court of Appeals for the Federal Circuit.
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`2
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`Respectfully Submitted,
`
`/S. Benjamin Pleune/
`Benjamin S. Pleune
`Reg. No. 52,421
`ALSTON & BIRD LLP
`Bank of America Plaza, Suite 4000
`101 South Tryon Street
`Charlotte, NC 28280-4000
`Telephone: (704) 444-1000
`Facsimile: (704) 444-1111
`Email: ben.pleune@alston.com
`
`Attorney for Patent Owner
`Universal Electronics Inc.
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`3
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`CERTIFICATE OF FILING
`
`In accordance with 37 C.F.R. § 42.6, the undersigned hereby certifies that ,
`on this 28th day of May, 2021, the foregoing, PATENT OWNER UNIVERSAL
`ELECTRONICS INC.’S NOTICE OF APPEAL, is being electronically filed
`through Patent Trial and Appeal Board’s E2E System and mailed via Priority Mail
`Express Overnight pursuant to 37 C.F.R. § 104.2 to the Director of the United States
`Patent and Trademark Office, at the following address:
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314
`
`
`
`The undersigned also hereby certifies that a true and correct paper copy of the
`above-captioned PATENT OWNER UNIVERSAL ELECTRONICS INC.’S
`NOTICE OF APPEAL and the docketing fee of $500 are being filed by CM/ECF,
`and Pay.gov, respectively.
`
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`4
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that on the below date, I caused a true and
`correct copy of the foregoing, PATENT OWNER UNIVERSAL ELECTRONICS
`INC.’S NOTICE OF APPEAL, to be served upon the following counsel of record
`via electronic mail:
`
`Jon E. Wright, Reg. No. 50,720 jwright-PTAB@sternekessler.com STERNE,
`KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 New York Avenue, N.W.
`Washington, D.C. 20005 Tel.: 202-772-8651 Fax: 202-371-2540
`
`Lestin L. Kenton, Reg. No. 72,314 lkenton-PTAB@sternekessler.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 New York Avenue,
`N.W. Washington, D.C. 20005 Tel.: 202-772-8594 Fax: 202-371-2540
`
`Daniel S. Block, Reg. No. 68,395 dblock-PTAB@sternekessler.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 New York Avenue,
`N.W. Washington, D.C. 20005 Tel.: 202-772-8735 Fax: 202-371-2540
`
`ttang-PTAB@sternekessler.com
`Timothy L. Tang, Reg. No. 75,187
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK
`AVENUE, N.W. WASHINGTON, D.C. 20005 TEL.: 202-772-8758 FAX: 202-371-
`2540
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`
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`May 28, 2021
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`Date:
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`/S. Benjamin Pleune/
`S. Benjamin Pleune
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`Exhibit A
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`Exhibit A
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`

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`Trials@uspto.gov Paper 31
`571-272-7822 Entered: April 13, 2021
`
`
`
`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
`_____________
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
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`

`

`IPR2019-01614
`Patent 9,911,325 B2
`
`
`I. INTRODUCTION
`In this inter partes review (“IPR”), instituted pursuant to 35 U.S.C.
`§ 314, Roku, Inc. (“Petitioner”) challenges the patentability of claims 1–5
`and 7 (the “challenged claims”) of U.S. Patent No. 9,911,325 B2 (Ex. 1001,
`“the ’325 patent”), owned by Universal Electronics, Inc. (“Patent Owner”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons discussed below, we determine Petitioner
`has shown by a preponderance of the evidence that claims 1–5 of the ’325
`patent are unpatentable, but has not proven by a preponderance of the
`evidence that claim 7 of the ’325 patent is unpatentable.
`
`II. BACKGROUND
`A. Procedural History
`On September 18, 2019, Petitioner filed a Petition (Paper 2, “Pet.”)
`requesting inter partes review of the challenged claims of the ’325 patent.
`Patent Owner filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`On April 16, 2020, applying the standard set forth in 35 U.S.C.
`§ 314(a), which requires demonstration of a reasonable likelihood that
`Petitioner would prevail with respect to at least one challenged claim, we
`instituted an inter partes review of all challenged claims of the ’325 patent
`based on all grounds presented in the Petition. Paper 7 (“Inst. Dec.”), 36.
`After institution, Patent Owner filed a Patent Owner Response (Paper
`15, “PO Resp.”), Petitioner filed a Reply to the Patent Owner Response
`(Paper 19, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 22, “PO
`Sur-reply”). An oral hearing was held on December 22, 2020, and a copy of
`the hearing transcript has been entered into the record. Paper 30 (“Tr.”).
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`IPR2019-01614
`Patent 9,911,325 B2
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`B. 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
`’325 patent. Pet. 56; 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, IPR2019-01612, IPR2019-
`01613, IPR2019-01615, IPR2019-01619, IPR2019-01620, and IPR2019-
`01621. Pet. 57; Paper 3, 2. The parties also note that the ’325 patent claims
`the benefit of the filing date of the following patent applications: U.S.
`Patent Application No. 13/068,820, filed May 21, 2011 (now U.S. Patent
`No. 9,355,553 (“the ’553 patent”)); U.S. Patent Application No. 12/462,526,
`filed August 4, 2009 (now U.S. Patent No. 8,004,389 (“the ’389 patent”));
`U.S. Patent Application No. 10/737,029, filed December 16, 2003 (now U.S.
`Patent No. 7,589,642 (“the ’642 patent”)). Pet. 57; Paper 3, 2–3.
`In addition, the ’642 patent was the subject of IPR2014-01082 (“the
`earlier IPR”), in which institution of trial was denied. See Ex. 2007, 369–
`379; PO Resp. 9. In the earlier IPR, independent claim 2 of the ’642 patent
`was challenged based on anticipation and single-reference obviousness by
`six different references. Ex. 2007, 372–373. In considering those earlier
`challenges, the Board found dispositive Patent Owner’s argument that none
`of the six references discloses “modulating [a] key code onto a carrier signal,
`thereby generating a key code signal” recited in claim 2. 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
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`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.
`
`C. The ’325 Patent
`1. Overview
`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.” Ex. 1001, 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
`associated with the selected electronic consumer device to be stored on the
`remote control device.” Id. at 1:66–2:3.
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`IPR2019-01614
`Patent 9,911,325 B2
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`Figure 1 of the ’352 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 3:19–21.
`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
`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
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`IPR2019-01614
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`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.
`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
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`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.
`
`2. Illustrative Claim
`Independent claim 1 is illustrative of the challenged claims and is
`reproduced below with bracketing used by Petitioner.
`1. A first device for transmitting a command to control a
`functional operation of a second device, the first device comprising:
`[1.1] a receiver;
`[1.2] a transmitter;
`[1.3] a processing device coupled to the receiver and the
`transmitter; and
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`IPR2019-01614
`Patent 9,911,325 B2
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`[1.4] a memory storing instructions executable by the processing
`device, the instructions causing the processing device to:
`[1.4.1] 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;
`[1.4.2] format the key code for transmission to the second device;
`and
`[1.4.3] transmit the formatted key code to the second device in a
`key code signal via use of the transmitter;
`[1.4.4] 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
`[1.4.5] 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.
`
`3. Prosecution History
`The ’325 patent issued from U.S. Patent Application No. 15/153,905,
`filed May 13, 2016 (“the ’905 application”). Ex. 1001, codes (21), (22).
`The ’905 application is a continuation of U.S. Patent Application
`No. 13/068,820 (issued as the ’553 patent), which is a continuation of U.S.
`Patent Application No. 12/462,526 (issued as the ’389 patent), which, in
`turn, is a continuation of U.S. Patent Application No. 10/737,029 (issued as
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`IPR2019-01614
`Patent 9,911,325 B2
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`the ’642 patent). Id. at code (63), 1:7–14. In what follows, we provide a
`summary of the prosecution histories of the ’642 patent and the ’325 patent.
`
`a. Prosecution History of the ’642 Patent
`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;
`(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. 2007, 25. 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.
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`Patent 9,911,325 B2
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`
`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
`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
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`IPR2019-01614
`Patent 9,911,325 B2
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`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
`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
`thus 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. at 328.
`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 of the ’642 patent. Id. at 333, 344–347.
`
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`Patent 9,911,325 B2
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`
`b. Prosecution History of the ’325 Patent
`The ’905 application was filed with original claim 1, which 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
`the
`instructions executable by
`a memory storing
`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 is a part of a codeset and
`wherein the codeset comprises time information that describes a
`digital one and a digital zero.
`Ex. 1002, 30. In a first, nonfinal Office Action, the Examiner rejected this
`claim for obviousness over the combination of Pope and U.S. Patent
`No. 4,242,664 (“Lindstedt”). Id. at 70. According to the Examiner, Pope’s
`base unit teaches “a first device for transmitting a command to control a
`functional operation of a second device,” where the first device receives a
`keystroke indicator signal from a handset (or a phone), i.e., a third device,
`generates a key code from the keystroke indicator signal, formats the key
`code for transmission to the second device, and transmits the formatted key
`code to the second device. Id. at 70–71.
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`IPR2019-01614
`Patent 9,911,325 B2
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`
`In response to the rejection, the Applicant amended the “wherein the
`generated key code” clause of claim 1 as follows:
`wherein the generated key code is a part of 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.
`Id. at 81. Based on this amendment, the Applicant argued
`Pope does not disclose, teach, or suggest generating 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, 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 as claimed.
`Id. at 85 (emphasis added). The Applicant further asserted “rather than
`disclose generating a key code in this manner, Pope discloses a system in
`which the handset includes a memory in which is stored appliance control
`codes.” Id. (emphasis added). According to the Applicant, in Pope,
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`IPR2019-01614
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`
`When a user activates a key of the keypad of the handset, the
`handset transmits a complete appliance control code (as opposed
`to a keystroke indicator) to the base station, and the base station
`then functions to simply transfer the received appliance control
`code to an appliance via use of an infrared signal . . . .
`Id. The Applicant argued that “Pope does not disclose, teach, or suggest the
`method for generating a key code as now claimed.” Id. at 86 (emphasis
`added).
`The Examiner allowed the claims without further comment. Id. at 96.
`
`D. Evidence
`1. Applied References
`Petitioner relies upon the following references in its challenges to
`patentability.
`
`Reference
`U.S. Patent Application Pub.
`No. 2004/0080428 A1
`
`U.S. Patent No. 4,426,662
`
`Date
`Filed
`Oct. 25, 2002 Rye1
`Issued
`Jan. 17, 1984 Skerlos
`U.S. Patent No. 7,562,128 B1 Filed
`Sept. 1, 2000 Caris
`U.S. Patent No. 8,132,105 B1 Filed
`Oct. 10, 2000 Dubil
`
`Designation Exhibit No.
`
`1005
`
`1006
`
`1007
`
`1008
`
`
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
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`IPR2019-01614
`Patent 9,911,325 B2
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`
`2. Testimonial Evidence
`Petitioner relies on two Declarations from Dr. Samuel H. Russ in
`support of its Petition and Reply. Ex. 1003 (“Russ Declaration”); Ex. 1030
`(“Russ Reply Declaration”). Patent Owner cross-examined Dr. Russ by
`deposition. Ex. 2010 (“Russ Dep.”).
`In support of its Patent Owner Response, Patent Owner relies on the
`Declaration of Dr. Michael D. Sprenger. Ex. 2003 (“Sprenger Declaration”).
`Petitioner cross-examined Dr. Sprenger by deposition. Ex. 1033 (“Sprenger
`Dep.”).
`
`E. Instituted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 2–3):
`
`Claims Challenged
`1–5
`1, 2, 3, 5, 7
`
`35 U.S.C. §
`103(a)2
`103(a)
`
`References/Basis
`Caris, Dubil
`Rye, Skerlos
`
`
`We instituted an inter partes review of all challenged claims on all grounds
`presented in the Petition. Inst. Dec. 36.
`
`III. ANALYSIS
`A. Relevant Principles of Law
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`
`
`2 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.
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`IPR2019-01614
`Patent 9,911,325 B2
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`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`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.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
`
`3 The parties do not address secondary considerations, which therefore do
`not constitute part of our analysis.
`
`
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`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
`F.3d 1342, 1366–67 (Fed. Cir. 2012) (holding that “some kind of motivation
`must be shown from some source, so that the [trier of fact] can understand
`why a person of ordinary skill would have thought of either combining two
`or more references or modifying one to achieve the patented [invention]”)).
`Petitioner cannot satisfy its burden of proving obviousness by employing
`“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016).
`We analyze Petitioner’s asserted grounds based on obviousness with
`the principles identified above in mind.
`
`B. 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
`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.” PO
`Resp. 10. According to Patent Owner, “[a]dditional education might
`
`
`
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`IPR2019-01614
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`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
`declarant, Dr. Sprenger, believes Patent Owner’s statement “is more
`appropriately tailored to the subject matter area of the ’325 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. Likewise, our analysis and conclusions in this Final
`Written Decision would be the same regardless of whether Petitioner’s or
`Patent Owner’s definition of the level of ordinary skill in the art is adopted.
`
`C. Claim Construction
`In an inter partes review, we apply