Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 35
`Entered: August 17, 2021
`
`
`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
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`
`
`
`Paper 35
`Entered: August 17, 2021
`
`
`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
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2019-01615
`Patent 9,716,853 B2
`
`I.
`
`INTRODUCTION
`
`Roku, Inc. (“Petitioner”) filed a Request for Rehearing (Paper 34,
`
`“Request” or “Reh. Req.”) of our Final Written Decision (Paper 33, “Final
`
`Written Decision” or “Dec.”) in which we determined that Petitioner did not
`
`demonstrate that claims 1, 3, 5, and 7 of U.S. Patent No. 9,716,853 B2
`
`(Ex. 1001, “the ’853 patent”) are unpatentable. We deny Petitioner’s
`
`Request for Rehearing.
`
`II. DISCUSSION
`
`On request for rehearing, “[t]he burden of showing a decision should
`
`be modified lies with the party challenging the decision.” 37 C.F.R.
`
`§ 42.71(d). “The request must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, reply, or a sur-
`
`reply.” Id. We have reviewed Petitioner’s Request and carefully considered
`
`all of the arguments presented. We are not persuaded that we
`
`misapprehended or overlooked any arguments or evidence, and thus we
`
`decline to modify the Decision.
`
`Petitioner contends the Board erred in two ways: 1) “in implicitly and
`
`narrowly construing independent claim 1 to require consultation of the
`
`claimed listing to determine which communication method to use”; and 2)
`
`“in implicitly and narrowly construing the term ‘communication method.’”
`
`Reh. Req. 5, 13 (emphases omitted). We address Petitioner’s second
`
`contention first, as the Final Written Decision turned on whether Petitioner
`
`demonstrated that Chardon (Ex. 1005) teaches or suggests the creation of “a
`
` 2
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`
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`IPR2019-01615
`Patent 9,716,853 B2
`
`listing comprised of at least a first communication method and a second
`
`communication method.” See Dec. 20–23.
`
`A.
`
`Alleged implicit construction of claim 1 with respect to
`“communication method”
`
`In the Final Written Decision, we noted that Petitioner equated the
`
`“first communication method” and “second communication method” recited
`
`in claim 1 with Chardon’s “CEC command codes” and “IR command
`
`codes,” respectively, where Chardon’s command codes are stored in a
`
`database linked to the Extended Display Identification Data (EDID) for
`
`target devices. Dec. 20–21. We thus evaluated whether command codes in
`
`an EDID-linked database teach or suggest the claimed listing comprised of
`
`at least a first communication method and a second communication method,
`
`and determined that “the record falls short of providing evidence that one of
`
`ordinary skill in the art would have understood stored command codes to act
`
`as an identification of communication methods to be used.” Id. at 21–22.
`
`In the Request, Petitioner argues the Board erred by implicitly
`
`construing “communication method” as limited to a “method of
`
`transmission” or a “command transmission medium.” Reh. Req. 13.
`
`Petitioner asserts that “communication method” more broadly encompasses
`
`“the control protocols used to transmit a command—e.g., IR protocols and
`
`CEC protocols.” Id. at 14. “There can also be no dispute,” Petitioner
`
`asserts, “that a CEC command code at least indicates that the CEC protocol
`
`and its associated hardware are used, and that an IR command code at least
`
`indicates that IR protocols and its associated hardware are used.” Id. at 14–
`
`15. We disagree that we implicitly construed “communication method” to
`
`exclude protocols, as Petitioner asserts, and in any case, our Decision would
`
` 3
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`IPR2019-01615
`Patent 9,716,853 B2
`
`not have been any different even if we had explicitly construed
`
`“communication method” to include protocols.
`
`First, the Decision did not make the alleged implicit construction that
`
`“communication method” is limited to a “method of transmission” or a
`
`“command transmission medium,” and excludes protocols. See Reh. Req.
`
`13–15. The portions of the Decision Petitioner points to as showing such
`
`implicit construction (id. at 13 (citing Dec. 21–22)) do not actually do so.
`
`Specifically, we stated that “Petitioner’s argument that the method of
`
`transmission is dependent on the contents of the database is not supported by
`
`its citations to Chardon.” Dec. 21. Here, we simply disagreed with
`
`Petitioner’s characterization of Chardon, and did not opine on what claim 1
`
`requires. We further stated that “Petitioner argues that there is no
`
`requirement that ‘literal names of different command transmission mediums
`
`. . . appear in the text of the listing.’ . . . This is true . . . .” Id. at 22 (quoting
`
`Reply 11). Thus, we agreed with Petitioner’s arguments against adopting a
`
`particular narrow interpretation of claim 1, and did not impose this limit on
`
`the scope of claim 1.
`
`Second, even if we had explicitly construed “communication method”
`
`to include protocols, the outcome of our Decision would have been no
`
`different. Petitioner points out that the parties agreed that “communication
`
`method” encompasses protocols. See Reh. Req. 13–14 (citing Resp. 22; Sur-
`
`Reply 9). But despite this agreement on the meaning of “communication
`
`method,” there was still a dispute as to whether Chardon’s command codes
`
`teach communication methods. For example, Patent Owner argued that “the
`
`‘command codes’ in the alleged ‘listing’ of Chardon are not ‘communication
`
` 4
`
`
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`
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`IPR2019-01615
`Patent 9,716,853 B2
`
`methods’ and Chardon’s alleged ‘listing’ does not comprise ‘communication
`
`methods.’” Resp. 20. Patent Owner’s expert testified that “[t]he ’853 patent
`
`expressly distinguishes between a listing of communication methods and a
`
`database of command codes.” Ex. 2002 ¶ 71. Petitioner argued the
`
`following: “Chardon’s EDID-linked databases disclose at least two different
`
`transmission mediums that convey at least two different sets of command
`
`codes. The identified listing thus comprises at least two different
`
`communication methods.” Reply 10. Petitioner’s expert testified that
`
`“Chardon’s EDID-linked, command-code data base (i.e. its listing) discloses
`
`‘a listing comprised of at least a first communication method (e.g., CEC
`
`command codes) and a second communication method (e.g., IR command
`
`codes) different than the first communication method.’” Ex. 1003 ¶ 203.
`
`The hearing transcript reflects this dispute. We asked Patent Owner
`
`“[i]f a communication code indicates which communication method should
`
`be used, then why wouldn’t a database comprising those communication
`
`codes also comprise the communication methods that would be used with
`
`them?” Tr. 33:4–7. Patent Owner responded that “command codes are
`
`different than communication methods.” Id. at 33:15–16. Patent Owner
`
`continued, “You can’t just look at a command code and determine the
`
`method.” Id. at 33:16–17. On rebuttal, Petitioner conceded “I don’t know
`
`whether a person of ordinary skill in the art, if you put a generic command
`
`code in the front of them, would be able to say, oh, yeah, I recognize this as
`
`a CEC command code, I recognize this as an IR command code.” Id. at
`
`59:20–24. But, Petitioner asserted the following: “Chardon is not talking
`
`about a generic command code database. Chardon is talking about a very
`
` 5
`
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`
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`IPR2019-01615
`Patent 9,716,853 B2
`
`specific list of CEC command codes and a very specific list of IR command
`
`codes . . . .” Id. at 61:11–14. Petitioner further asserted that “to suggest that
`
`Chardon’s multimedia gateway can’t figure out for a CEC command code,
`
`you know, which interface to send that command just . . . defies belief.” Id.
`
`at 61:24–26.
`
`In short, the record shows that the issue of whether a command code
`
`teaches a communication method was in dispute—even with the parties
`
`agreeing that “communication method” encompasses protocols—and we
`
`decided in favor of Patent Owner on this issue. See Dec. 20–23. We note
`
`that a request for rehearing is not an opportunity to challenge the Board’s
`
`assessment of the arguments or weighing of the evidence, but is instead
`
`limited to identifying a point the Board misapprehended or overlooked. See
`
`37 C.F.R. § 42.71(d).
`
`B.
`
`Alleged implicit construction of claim 1 to require consultation of the
`claimed listing to determine which communication method to use
`
`In the Request, Petitioner argues “[t]o the extent that the Board held
`
`the claims patentable because Chardon’s system allegedly does not consult
`
`its EDID-linked command code databases to determine which
`
`communication method should be used, the Board made two dispositive
`
`errors.” Reh. Req. 5. First, Petitioner asserts that claim 1 does not require
`
`the selection of a communication method to depend on the claimed listing,
`
`nor does it require consulting the claimed listing to determine which
`
`communication method to use. Id. Rather, Petitioner asserts, claim 1 more
`
`broadly recites responding to a request from a controlling device “by causing
`
`a one of the first and second communication methods in the listing of
`
`communications methods . . . to be used to transmit to the intended target
`
` 6
`
`
`
`
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`IPR2019-01615
`Patent 9,716,853 B2
`
`appliance a command.” Id. at 6. In other words, claim 1 “simply does not
`
`specify any particular means of causation, let alone a specific requirement
`
`that the selection of which communication method to use depends on the
`
`contents of the created listing.” Id. Second, Petitioner argues that, “[e]ven if
`
`the selection of the communication method to be used is dependent on the
`
`contents of the created listing (which it is not), the Board still erred in
`
`determining that Chardon does not meet this limitation.” Id. at 10. We
`
`disagree with Petitioner that we implicitly construed claim 1 to require
`
`consultation of the claimed listing to determine which communication
`
`method to use.
`
`In the Final Written Decision, we stated that “Petitioner’s argument
`
`that the method of transmission is dependent on the contents of the database
`
`is not supported by its citations to Chardon.” Dec. 21. We further stated
`
`that “Chardon does not describe deciding whether to send an IR code based
`
`on consulting an EDID-linked database of command codes.” Id. at 22.
`
`These statements address Petitioner’s arguments with respect to the claim 1
`
`limitation of creating “a listing comprised of at least a first communication
`
`method and a second communication method.” See id. at 21 (“[W]e
`
`therefore evaluate whether command codes in Chardon’s database teach or
`
`suggest the listing of communication methods of claim 1”). They do not
`
`show an implicit construction of claim 1 to require consultation of the
`
`claimed listing to determine which communication method to use. In fact,
`
`the Decision did not consider what was required by the claim 1 limitation of
`
`“causing a one of the first and second communication methods . . . to be
`
`used,” because we did not specifically address this limitation vis-à-vis the
`
` 7
`
`
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`
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`IPR2019-01615
`Patent 9,716,853 B2
`
`prior art relied upon in the asserted ground. See Dec. 20–23. Rather, as
`
`stated above, the Decision turned on whether Chardon teaches or suggests
`
`the claim 1 limitation of creating “a listing comprised of at least a first
`
`communication method and a second communication method.” See id.
`
`Thus, we need not address Petitioner’s alternative argument that Chardon
`
`teaches “causing a one of the first and second communication methods . . . to
`
`be used” under the narrow construction Petitioner alleges we implicitly
`
`applied. See Reh. Req. 10–13.
`
`III. CONCLUSION
`
`We have reviewed and considered the arguments in Petitioner’s
`
`Rehearing Request and conclude that Petitioner has not carried its burden of
`
`demonstrating that the Board misapprehended or overlooked any matters in
`
`rendering the Final Written Decision. 37 C.F.R. § 42.71(d). Thus,
`
`Petitioner’s challenge does not meet the standard set forth for a request for
`
`rehearing.
`
`The Request for Rehearing is denied.
`
` 8
`
`
`
`
`
`IPR2019-01615
`Patent 9,716,853 B2
`
`PETITIONER:
`
`Jon E. Wright
`Lestin L. Kenton
`Daniel S. Block
`Ali H. Allawi
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`jwright-ptab@sternekessler.com
`lkenton-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`aallawi-PTAB@sternekessler.com
`
`
`PATENT OWNER:
`
`Benjamin S. Pleune
`Ryan W. Koppelman
`Thomas W. Davison
`James H. Abe
`Caleb J. Bean
`Derek S. Neilson
`Nicholas T. Tsui
`ALSTON & BIRD LLP
`ben.pleune@alston.com
`ryan.koppelman@alston.com
`tom.davison@alston.com
`james.abe@alston.com
`caleb.bean@alston.com
`derek.neilson@alston.com
`nick.tsui@alston.com
`
`Gary Jarosik
`James J. Lukas, Jr.
`Benjamin P. Gilford
`GREENBERG TRAURIG, LLP
`jarosikg@gtlaw.com
`lukasj@gtlaw.com
`gilfordb@gtlaw.com
`
` 9
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