Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: April 17, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner,
`v.
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`IPR2019-01615
`Patent 9,716,853 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`Roku, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 3, 5, and 7 (“the challenged claims”) of U.S. Patent
`No. 9,716,853 B2 (Ex. 1001, “the ’853 patent”). Paper 2 (“Pet.”). Patent
`Owner Universal Electronics, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). After we issued an order (Papers 7, 8)
`
`
`
`
`571-272-7822
`
`Paper 12
`Entered: April 17, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner,
`v.
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`IPR2019-01615
`Patent 9,716,853 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`Roku, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 3, 5, and 7 (“the challenged claims”) of U.S. Patent
`No. 9,716,853 B2 (Ex. 1001, “the ’853 patent”). Paper 2 (“Pet.”). Patent
`Owner Universal Electronics, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). After we issued an order (Papers 7, 8)
`
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`IPR2019-01615
`Patent 9,716,853 B2
`that granted authorization for additional briefing addressing the issue of
`discretionary denial under 35 U.S.C. § 325(d), Petitioner filed a Reply to the
`Preliminary Response (Paper 9 (“Pet. Reply”)) and Patent Owner filed a
`Sur-Reply to the Reply (Paper 11 (“PO Sur-Reply”)). We have authority
`under 35 U.S.C. § 314.
`Upon consideration of the Petition, Preliminary Response, and
`additional briefing, we decline to exercise the discretion to deny institution
`under 35 U.S.C. § 325(d), and we determine that Petitioner has demonstrated
`a reasonable likelihood that it would prevail in showing the unpatentability
`of the challenged claims of the ’853 Patent. We institute inter partes review.
`II. BACKGROUND
`A. Related Matters and Real Parties in Interest
`Petitioner and Patent Owner each state that the ’853 patent is involved
`in Universal Electronics Inc. v. Roku, Inc., Case 8-18-cv-01580, in the
`Central District of California. Pet. 72; Paper 3 (Patent Owner’s Mandatory
`Notices), 2. Patent Owner additionally identifies as related eight other inter
`partes review petitions filed by Petitioner requesting review of other patents
`owned by Patent Owner. Paper 3, 2.
`Petitioner identifies only itself as the real party in interest. Pet. 72.
`Patent Owner also identifies only itself as the real party in interest. Paper 3,
`2.
`
`B. Overview of the ’853 Patent
`The ’853 patent relates to a device that receives “a request from a
`controlling device, such as a remote control, smart phone, or the like” to
`“have one or more target devices perform one or more functional
`operations.” Ex. 1001, code (57). The device “responds to the request by
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`applying the optimum methodology to propagate one or more commands” to
`the target device(s) to perform the functional operation(s). Id.
`Figure 1 of the ’853 patent, reproduced below, illustrates an
`exemplary system in which a universal control engine (UCE) according to
`the invention is used to issue commands to control various controllable
`appliances. Id. at 3:39–41.
`
`
`In Figure 1, controllable appliances include television 106, cable set
`top box combined with digital video recorder 110, DVD player 108, and AV
`receiver 120. Id. at 3:41–44. Appliance commands are issued by UCE 100
`in response to infrared (“IR”) request signals 116 received from remote
`control device 102 or radio frequency (“RF”) request signals 118 received
`from app 124 resident on smart device 104. Id. at 3:52–56. Transmission of
`commands from UCE 100 to the controllable appliances may take the form
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`Patent 9,716,853 B2
`of wireless IR signals 114 or Consumer Electronic Control (“CEC”)
`commands issued over wired HDMI interface 112 if available. Id. at 2:38–
`45, 3:58–4:4.
`The ’853 patent describes that the method, protocol, or medium for
`issuing commands to controllable appliances may vary by appliance and/or
`by function to be performed. Id. at 6:62–64, 7:5–7. “[I]n some instances a
`particular appliance may support receipt of an operational command via
`more than one path,” such as via a CEC command or via an IR command.
`Id. at 7:10–12. A UCE may use a matrix including data cells, each
`corresponding to a specific command and a specific appliance, with the data
`content of the cell including “identification of a form of
`command/transmission to be used and a pointer to the required data value
`and formatting information for the specific command.” Id. at 7:26–29,
`Fig. 7. The matrix 700 may contain a null entry if “a particular function is
`not available on or not supported by a specific appliance.” Id. at 7:46–49.
`“In certain embodiments one or more secondary command matrices . . . may
`also be provisioned, allowing for the use of alternate command methods in
`the event it is determined by the UCE programming that a preferred
`command was unsuccessful.” Id. at 7:42–46.
`Figure 13 of the ’853 patent, reproduced below, illustrates an
`exemplary series of steps performed by a UCE in issuing a function
`command to an appliance. Id. at 3:29–31, 11:40–47.
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`As shown in Figure 13, a command request is received (1300) and a
`corresponding data element, if one exists, is retrieved from a preferred
`command matrix and transmitted to the appliance (1302, 1304, 1306). Id. at
`11:40–57, 12:4–10. In certain cases, when a determination that the
`communication interface and protocol used provides for a confirmation of
`successful transmission, if that confirmation is not received (1308, 1310)
`then if an alternate method of issuing the command is available, the data
`element from an alternate command matrix is retrieved and transmitted
`(1312, 1316, 1306). Id. at 12:10–16, 12:21–35.
`C. Challenged Claims
`Of the challenged claims, claim 1 is the sole independent claim, and
`each of the remaining challenged claims depends directly from claim 1.
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`Patent 9,716,853 B2
`Claim 1 is reproduced below with bracketed notations, corresponding to
`notations in the Petition, added for reference.
`1. [1.P] A universal control engine, comprising:
`[1.1] a processing device; and
`a memory device having stored thereon instructions
`executable by
`the processing device,
`the
`instructions, when executed by the processing
`device, causing the universal control engine
`[1.2] to respond to a detected presence of an
`intended target appliance within a logical
`topography of controllable appliances which
`includes the universal control engine [1.3] by
`using an identity associated with the intended
`target appliance to create a listing comprised of
`at least a first communication method and a
`second communication method different than
`the first communication method [1.4] for use in
`controlling each of at least a first functional
`operation and a second functional operation of
`the intended target appliance [1.5] and to
`respond to a received request from a controlling
`device intended to cause the intended target
`appliance to perform a one of the first and
`second functional operations [1.6] by causing a
`one of the first and second communication
`methods
`in
`the
`listing of communication
`methods that has been associated with the
`requested one of the first and second functional
`operations to be used to transmit to the intended
`target appliance a command for controlling the
`requested one of the first and second functional
`operations of the intended target appliance.
`Ex. 1001, 14:49–15:7.
`
`Reference
`Chardon et al.
`(“Chardon”)
`
`D. Evidence Relied Upon
`Date
`US 2012/0249890 A1 Oct. 4, 2012
`
`Exhibit
`1005
`
`6
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`Patent 9,716,853 B2
`Date
`Reference
`US 2009/0254500 A1 Oct. 8, 2009
`Stecyk
`HDMI Licensing, LLC, High-Definition
`Multimedia Interface, Specification
`Version 1.3a (November 10, 2006)
`(“HDMI 1.3a”)
`Petitioner also relies upon the Declaration of Dr. Samuel H. Russ.
`(Ex. 1003).
`
`Exhibit
`1006
`
`2006
`
`1010
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`Claims Challenged 35 U.S.C. §1 Reference(s)/Basis
`1, 3, 5, 7
`103(a)
`Chardon
`1, 3, 5, 7
`103(a)
`Chardon and HDMI 1.3a
`1, 3, 5, 7
`103(a)
`Chardon and Stecyk
`1, 3, 5, 7
`103(a)
`Chardon, HDMI 1.3a, and Stecyk
`As discussed infra at Section IV.D.4, we determine that the Petition
`sufficiently sets forth an argument under 35 U.S.C § 103 that the challenged
`claims are obvious over Chardon and, alternatively, sufficiently sets forth an
`argument that the challenged claims are obvious over a combination of
`Chardon with HDMI 1.3a and/or Stecyk.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), amended 35 U.S.C. § 103. Because the
`application from which the ’853 patent claims priority through a chain of
`continuation applications to an application filed before March 16, 2013, the
`effective date of the relevant amendment, the pre-AIA version of § 103
`applies. Ex. 1001, code (63).
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`III. 35 U.S.C. § 325(d) DISCRETION
`Patent Owner takes the position that we should exercise our discretion
`to deny the Petition under 35 U.S.C. § 325(d). Prelim. Resp. 15–19; PO
`Sur-Reply. Patent Owner argues, quoting Petitioner, that the sole ground of
`the Petition is based principally on the “primary reference” Chardon, which
`was cited on an Information Disclosure Statement (“IDS”) during the
`prosecution of the application that issued as the ’853 patent. Prelim. Resp.
`16–17 (quoting Pet. 2); PO Sur-Reply 2; Ex. 1002, 81, 170, 182–186).
`Petitioner acknowledges that “Chardon . . . was cited . . . during
`prosecution.” Pet. 9; Pet. Reply 1. But, because the proposed combination
`of prior art includes what Petitioner characterizes as “non-cumulative”
`additional references, Petitioner contends that the instant Petition does not
`present “the same or substantially the same” art or arguments previously
`considered. Pet. 9; Pet. Reply 1–2.
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`(the AIA does not impose a “mandate to institute review”). Our discretion is
`guided by 35 U.S.C. § 325(d), which provides, in relevant part:
`MULTIPLE PROCEEDINGS -- . . . In determining whether to
`institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the
`Office.
`Thus, 35 U.S.C. § 325(d) identifies two separate issues that the
`Director may consider in exercising discretion to deny institution of review:
`whether the petition presents to the Office the same or substantially the same
`art previously presented to the Office; and whether the petition presents to
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`the Office the same or substantially the same arguments previously
`presented to the Office. Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, at 7 (PTAB
`Feb. 13, 2020) (designated precedential March 24, 2020). We may consider
`multiple factors when determining whether to exercise our discretion not to
`institute under § 325(d), including:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) cumulative
`nature of the asserted art and the prior art evaluated during
`examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in which
`Petitioner relies on the prior art or Patent Owner distinguishes
`the prior art; (e) whether Petitioner has pointed out sufficiently
`how the Examiner erred in its evaluation of the asserted prior art;
`and (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`8, 17–18 (PTAB Dec. 15, 2017) (informative; precedential as to § III.C.5,
`first paragraph). We apply a two-part framework, first considering Becton,
`Dickinson factors (a), (b), and (d) to determine whether the same or
`substantially the same art or arguments were previously presented to the
`Office, and if so, evaluating Becton, Dickinson factors (c), (e), and (f) to
`determine whether the Petitioner has demonstrated that the Office erred in a
`manner material to the patentability of challenged claims. Advanced
`Bionics, 7–11.
`With respect to the first part of the Advanced Bionics framework,
`Petitioner’s challenge is based on Chardon alone or, alternatively on a
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`combination of art including Chardon2. Chardon was presented to the
`Examiner in an IDS, which the Examiner both initialed as considered and
`separately noted as having been considered. Pet. 36–71; Ex. 1002, 79–84
`(IDS citing Chardon at 81), 167–179 (Office Action noting that the IDS has
`been considered at 170), 182–187 (initialed version of IDS). Petitioner and
`Patent Owner agree that the two other references, HDMI 1.3a and Stecyk,
`included in the ground were not specifically cited to the Examiner or noted
`as having been considered during the prosecution of the application that
`issued as the ’853 patent. Pet. Reply 2; PO Sur-Reply 3.
`Petitioner argues that the HDMI 1.3a and Stecyk references are not
`cumulative of the references the Examiner used in rejecting the claims
`during prosecution, and thus that the challenge is not based on substantially
`the same art previously presented to the Office. Pet. Reply 2. Patent Owner
`argues that the proper evaluation per our precedent in Advanced Bionics is
`whether HDMI 1.3a and Stecyk are cumulative of Chardon. PO Sur-Reply
`2–3. Patent Owner also argues that Petitioner included the HDMI 1.3a and
`Stecyk references in combination with Chardon specifically to defeat a
`§ 325(d) argument, and noted that Petitioner might characterize the sole
`ground in the Petition “as including an additional unnamed ground of
`Chardon alone.” Prelim. Resp. 1, 14, 16, 19.
`The Petition uses the HDMI 1.3a reference to indicate what, according
`to Petitioner, one of ordinary skill in the art would have recognized
`
`
`2 As discussed infra at Section IV.D.4, we determine that the Petition
`sufficiently sets forth an argument under 35 U.S.C § 103 that the challenged
`claims are obvious over Chardon alone and, alternatively, sufficiently sets
`forth an argument that the challenged claims are obvious over a combination
`of Chardon and Stecyk and/or HDMI 1.3a.
`
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`regarding the teachings and suggestions of Chardon’s described HDMI
`display connected via an HDMI cable with respect to limitation [1.2] of
`claim 1. Pet. 43–46; Ex. 1003 ¶¶ 178–179. Petitioner describes this
`limitation as “explicitly disclosed” in Chardon. Pet. 46. Petitioner generally
`describes that “[a] person of ordinary skill in the art would have . . . turned
`to [HDMI 1.3a] to fill in any details in Chardon with respect to how HDMI-
`capable devices operate.” Id. at 29. Stecyk “is optionally relied on [in the
`Petition] to the extent that the Board does not find creation of a ‘listing’ [in
`claim 1] obvious over Chardon alone, or in view of the state of the art; and
`to the extent that the Board does not find providing a ‘prompt’ [in claim 5]
`obvious over Chardon alone, or in view of the state of the art.” Pet. 32. We
`find this argument inconsistent with Petitioner’s contention that Stecyk is
`not cumulative of Chardon. That is, to the extent Petitioner relies upon
`Stecyk, Petitioner itself argues that the teachings relied upon are cumulative
`of Chardon.
`In analyzing Becton, Dickinson factors (a) and (b) (the similarities and
`material differences between the asserted art and the prior art involved
`during examination, and the cumulative nature of the asserted art and the
`prior art evaluated during examination in this case), we agree with Patent
`Owner that the similarities between Chardon and the portions of HDMI 1.3a
`and Stecyk described by Petitioner, and the cumulative nature of those
`portions of HDMI 1.3a and Stecyk with respect to Chardon, lead to a
`conclusion that that the same or substantially the same art was previously
`presented to the Office.
`Thus, we proceed to the next part of the Advanced Bionics framework
`and consider Becton, Dickinson factors (c), (e), and (f) to determine whether
`Petitioner has demonstrated that the Office erred in a manner material to the
`
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`patentability of the challenged claims. Advanced Bionics at 8. While it is
`undisputed that the Examiner initialed the IDS, there is no record of what the
`Examiner’s consideration of Chardon involved. See, generally, Ex. 1002.
`As Advanced Bionics instructs, “if the record of the Office’s previous
`consideration of the art is not well developed or silent, then a petitioner may
`show the Office erred by overlooking something persuasive under factors (e)
`and (f).” Advanced Bionics at 10.
`Petitioner argues that the Examiner materially erred by
`misapprehending or overlooking the specific teachings of the relevant prior
`art with respect to the patentability of the challenged claims. Pet. Reply 2–5.
`Petitioner details that, in the prosecution history of the application that
`issued as the ’853 patent, the applicant relied upon, and the Examiner found
`persuasive, the features of limitations [1.3] and [1.4] of challenged claim 1
`to overcome the prior art references cited in a rejection. Id. at 3–4.
`Petitioner further argues that Chardon discloses these limitations. Id. at 4–5
`(citing Pet. 47–52). Therefore, Petitioner argues, the Examiner materially
`erred in the evaluation of Chardon. Id. at 2–5. Patent Owner argues that
`“Chardon would have been fresh in the Examiner’s mind” when the
`Examiner issued an office action and the notice of allowability, and that the
`combination of Chardon with additional references that disclose the same
`information cannot show material error. PO Sur-Reply 4–5.
`We determine, with respect to Becton, Dickinson factor (e), that
`Petitioner has pointed out sufficiently how the Examiner materially erred in
`its evaluation of Chardon. Specifically, we determine that the Examiner
`erred by overlooking the specific teachings of Chardon. As further
`discussed below at Sections IV.D.5.c through IV.D.5.e, Chardon discloses
`responding to a detected presence of an intended target appliance by using
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`an identity associated with the intended target appliance to create a listing
`comprised of at least two different communication methods for use in
`controlling functional operations of the intended target appliance, which
`teaches or suggests limitations [1.2] through [1.4] of claim 1. The Notice of
`Allowability specifically sets forth the Examiner’s conclusion that these
`limitations are not disclosed, taught, or suggested in the references applied in
`prior rejections or in the other art considered. Ex. 1002, 3–4. Accordingly,
`we determine that there has been a showing that the Examiner erred in the
`evaluation of the asserted prior art in a manner material to the patentability
`of the challenged claims. We decline to exercise discretion under 35 U.S.C.
`§ 325(d) not to institute inter partes review.
`
`IV. DISCUSSION
`A. Person of Ordinary Skill in the Art
`Petitioner argues that one of ordinary skill in the art
`would have had general knowledge of home theater systems,
`control of devices within the home theater systems, and remote
`control devices as of October 28, 2011. Further, a POSA would
`have had: (1) at least a bachelor’s degree in an electrical
`engineering, computer engineering, or equivalent coursework,
`and (2) at least one year of experience researching or developing
`structure and operating principles of common digital content
`reproduction and related appliances, contemporary television
`and home theater standards, and specifications of consumer
`digital reproducing devices of the time.
`Pet. 13. Patent Owner proposes a different standard:
`[A person of ordinary skill in the art] would have had a
`bachelor’s degree which
`involved software design and
`development coursework, for example, electrical engineering,
`computer engineering, computer science, cognitive science,
`industrial engineering, information systems, information studies,
`or a similar degree, and at least one year of work experience in
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`software programming, development, or design of consumer
`applications. Additional education might substitute for some of
`the experience, and substantial experience might substitute for
`some of the educational background.
`Prelim. Resp. 6. We note that the ’853 patent specifically relates to remote
`control devices, and therefore, for the purposes of this decision, we adopt
`Petitioner’s standard that includes general knowledge consistent with the
`field of the invention, and, additionally, is consistent with the prior art
`presented. See Ex. 1001, 1:63–2:3; Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill
`in the art). We note that this determination is preliminary, and that Patent
`Owner’s expert testified that his analysis was not affected by the definition
`adopted. See Prelim. Resp. at 7; Ex. 2001 (Expert report of Dr. Don
`Turnbull), ¶ 40. Adopting the Patent Owner’s definition would not affect
`our analysis here.
`
`B. Principles of Law
`It is a petitioner’s burden to demonstrate unpatentability. 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)).
`A claim is unpatentable as obvious 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.”
`35 U.S.C. § 103(a) (2012). 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) objective
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`evidence of nonobviousness.3 Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17–18 (1966).
`Even if prior art references disclose all claim limitations when
`combined, there must be evidence to explain why a person of ordinary skill
`in the art would have combined the references to arrive at the claimed
`invention. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`1366–67 (Fed. Cir. 2012) (citing Innogenetics, N.V. v. Abbott Labs., 512
`F.3d 1363, 1374 (Fed. Cir. 2008) (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]”)).
`An invention “composed of several elements is not proved obvious merely
`by demonstrating that each of its elements was, independently, known in the
`prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather,
`“it can be important to identify a reason that would have prompted a person
`of ordinary skill in the relevant field to combine the elements in the way the
`claimed new invention does.” Id.
`An obviousness determination “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006));
`see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`2016).
`
`
`3 No argument or evidence concerning secondary considerations has been
`adduced.
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`We apply the same claim construction standard that is applied in civil
`actions under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R § 42.100(b)
`(2019). Under Phillips, claim terms are afforded “their ordinary and
`customary meaning.” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)). “[T]he ordinary
`and customary meaning of a claim term is the meaning that the term would
`have to a person of ordinary skill in the art in question at the time of the
`invention. . . .” Id. at 1313. “Claim construction begins with the words of
`the claim, which ‘must be read in view of the specification, of which they
`are a part.’” Wi-Lan, Inc. v. Apple, Inc., 811 F.3d 455, 462 (Fed. Cir. 2016)
`(quoting Phillips, 415 F.3d at 1312–15).
`C. Claim Construction
`Only terms that are in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner proposes only one claim construction, for limitation [1.4],
`which specifies that the first and second communication methods are “for
`use in controlling each of at least a first functional operation and a second
`functional operation of the intended target appliance.” Pet. 14–17.
`Petitioner requests that we follow the district court’s construction from the
`Markman order and construe this term as “for use in controlling the same at
`least a first functional operation and a second functional operation of the
`same intended target appliance.” Id. at 15 (quoting Ex. 1017, 31). Petitioner
`argues that this construction “is the most natural reading of the claim in view
`of the specification and prosecution history,” and provides each claim term
`with meaning. Id. at 16–17 (citing Elekta Instrument S.A. v. O.U.R. Sci.
`
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`Patent 9,716,853 B2
`Int’l, Inc., 214 F.3d 1302, 1305–07 (Fed. Cir. 2000); Bicon, Inc. v.
`Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)).
`Patent Owner argues that this term “is understood by its plain and
`ordinary meaning” and requires no further construction. Prelim. Resp. 11.
`Preliminarily, we agree with the district court’s conclusion that the
`language of claim 2 and additional portions of the prosecution history of the
`application that issued as the ’853 patent each support the district court’s
`construction. Ex. 1007, 34–35. However, at this point, no specific
`construction is required for the disputed term. Vivid Techs., 200 F.3d at 803.
`D. Analysis of the Asserted Grounds
`Petitioner argues that claims 1, 3, 5, and 7 would have been obvious
`over “over Chardon (EX1005), alone or in view of HDMI Specification
`(EX1010), and Stecyk (EX1006).” Pet. 36.
`1. Overview of Chardon
`Chardon is a U.S. Patent Application Publication published on
`October 4, 2012 of an application filed March 31, 20114. Ex. 1005, codes
`(43), (22). Chardon relates to configuring a remote-control system including
`by querying a display for identification data for the display and storing the
`display’s identification data and command codes configured for controlling
`the display. Id. at code (57), ¶ 7. Chardon describes an entertainment
`system with a set of HDMI appliances including, for example, an HDMI
`
`
`4 Petitioner contends that Chardon qualifies as prior art under pre-AIA
`35 U.S.C. § 102(a) and (e). Pet. 4. Patent Owner contends that Chardon is
`not prior art under pre-AIA 35 U.S.C. § 102(a), but does not dispute that
`Chardon qualifies as prior art under pre-AIA 35 U.S.C. § 102(e). Prelim.
`Resp. 14–15. On the current record and for the purposes of this decision, we
`determine that Chardon is prior art at least under pre-AIA 35 U.S.C.
`§ 102(e).
`
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`display and speakers, and HDMI sources such as a cable or a satellite set-
`top-box, a personal video recorder, a DVD player, a personal computer,
`among others. Id. ¶¶ 30, 37, Fig. 1. A multi-media gateway having a
`remote-control engine may be included in the entertainment system. Id.
`¶¶ 30–32, 44. The entertainment system also supports access, for example
`via a connection to a remote server, to a database that stores sets of
`command codes, such as sets of IR command codes and CEC command
`codes. Id. ¶¶ 30–35. For example, the remote database may store sets of
`command codes such as sets of IR and CEC command codes, and a link that
`associates a given appliance with the set of command codes configured to
`control that appliance. Id. ¶ 33.
`The remote control system includes a memory and processor to store
`and operate a remote-control engine application. Id. ¶¶ 39, 43. Sets of
`command codes including IR and CEC command codes may be stored in
`memory of the remote control. Id. ¶¶ 39, 43. The remote control also may
`include an IR transceiver, an RF transceiver, and a bus that includes a CEC
`bus or communication port over which CEC command codes may be
`communicated to HDMI appliances. Id. ¶¶ 38–40, 43.
`In one embodiment, “the remote-control engine operating on the
`remote-control system of the multimedia gateway is configured to collect the
`Extended Display Identification Data (EDID) of an HDMI display.” Id.
`¶ 44. This may occur “if the multi-media gateway and HDMI display are
`coupled by an HDMI cable.” Id. “The remote-control engine of the multi-
`media gateway or the remote control device may query the HDMI display
`via a two-way IR or RF communication to collect the EDID.” Id.; see also
`id. ¶ 47. “The multi-media gateway or the remote-control device may be
`configured to ‘link’ the EDID for the HDMI display with the locally stored
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`set of command codes (IR command codes and/or CEC command codes) for
`the HDMI display.” Id.
`In operation, the remote control engine sends a CEC command code
`to an HDMI appliance to be executed. Id. ¶ 58, Fig. 5, element 500. If a
`response is not received indicating that the command code has been received
`and executed, an IR command code is sent to the HDMI appliance. Id. ¶ 58,
`Fig. 5, elements 510, 530, 540; see also id. ¶ 62, Fig. 6.
`2. Overview of HDMI 1.3a
`HDMI 1.3a is version 1.3a of the High-Definition Multimedia
`Interface specification. Ex. 1010, 17. “The High-Definition Multimedia
`Interface is provided for transmitting digital television audiovisual signals
`from DVD players, set-top boxes and other audiovisual sources to television
`sets, projectors and other video displays.” Id. HDMI carries audio, video,
`control, and status information. Id. HDMI 1.3a describes transmitting the
`audiovisual signals from an audiovisual source (a device with HDMI output)
`to an HDMI sink (a device with an HDMI input) such as television sets,
`projectors, and other video displays. Id. at 17, 21. HDMI 1.3a describes an
`optional CEC line “for high-level user control of HDMI-connected devices.”
`Id. at 139; id. at 24, 128.
`HDMI 1.3a describes a physical address discovery algorithm that
`allocates physical addresses for each device upon power-up or “whenever a
`new device is added” to an HDMI cluster, indicated by a change in the HPD
`(“Hot Plug Detect”) signal. Id. at 139–142. An HDMI source can access an
`HDMI sink’s Enhanced Extended Display Identification Data (“E-EDID”),
`which contains an EDID structure, to discover the configuration or
`capabilities of the sink. Id. at 25, 128, 134. A high voltage level for the
`HPD signal indicates that the E-EDID for a sink is readable. Id. at 139.
`
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`
`3. Overview of Stecyk
`Stecyk relates to a home theater network system including a control
`system providing centralized control of the devices in the home theater
`network system. Ex. 1006 ¶¶ 1, 47, 70. A digital module (“DM”) allows a
`user to operate the dev
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