Trials@uspto.gov Paper 13
`571-272-7822 Entered: November 10, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00951
`Patent 9,911,325 B2
`_____________
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`571-272-7822 Entered: November 10, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00951
`Patent 9,911,325 B2
`_____________
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`IPR2020-00951
`Patent 9,911,325 B2
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`
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`I. INTRODUCTION
`Roku, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1, 6, 8, 9, and 11–16 of U.S. Patent
`No. 9,911,325 B2 (Ex. 1001, “the ’325 patent”). The Petition involves the
`same parties and the same patent at issue in an instituted trial proceeding in
`IPR2019-01614 (“the related IPR”). Concurrent with its Petition, Petitioner
`also filed a Motion for Joinder, seeking to join this proceeding with
`IPR2019-01614. Paper 3 (“Mot.”). Universal Electronics, Inc. (“Patent
`Owner”) filed both a Preliminary Response and an Opposition to Petitioner’s
`Joinder Motion. Papers 11 (“Prelim. Resp.”), 7 (“Opp.”). With our
`authorization, Petitioner filed a Reply to Patent Owner’s Opposition. Paper
`10 (“Reply”).
`For the reasons set forth below, we deny both the Petition and the
`Motion for Joinder.
`
`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. 78. Patent Owner identifies the same case as a
`related matter. Paper 6, 1.
`The parties additionally identify the following proceedings as
`involving the ’325 patent: (1) Universal Electronics, Inc. v. Funai Electric
`Co., No. 8:20-cv-0700 (C.D. Cal.); (2) Universal Electronics, Inc. v. TCL
`Electronics Holdings Ltd., No. 8:20-cv-0704 (C.D. Cal.); (3) Universal
`Electronics, Inc. v. TCL Electronics Holdings Ltd., No. 8:20-cv-3328 (C.D.
`
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`Patent 9,911,325 B2
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`Cal.); (4) Universal Electronics, Inc. v. Hisense Co., No. 8:20-cv-0696 (C.D.
`Cal.); and (5) Certain Electronic Devices, Including Streaming Players,
`Televisions, Set Top Boxes, Remote Controllers, and Components Thereof,
`Inv. No. 337-3450 (ITC). Pet. 78–79; Paper 6, 1. Patent Owner also
`identifies the following case as a related matter: Universal Electronics Inc.
`v. Roku, Inc., No. 8:20-cv-0701 (C.D. Cal.). Paper 6, 1.
`The ’325 patent is also the subject of a co-pending petition for inter
`partes review filed by Petitioner in IPR2020-00953, where Petitioner also
`seeks joinder with IPR2019-01614. Pet. 79.
`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, IPR2019-01621,
`IPR2020-00952, IPR2020-00953, and IPR2020-01012. See Paper 6, 1–2.
`
`B. Real Parties In Interest
`The parties identify only themselves as real parties in interest.
`Pet. 78; Paper 6, 1.
`
`C. 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
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`Patent 9,911,325 B2
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`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
`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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`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
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`Patent 9,911,325 B2
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`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.
`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
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`Patent 9,911,325 B2
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`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.
`
`D. Illustrative Claim
`Independent claim 1 is illustrative of the challenged claims and is
`reproduced below.
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`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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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 2–3):
`
`Claim(s)
`Challenged
`1
`8, 9, 11–13, 15–16
`6
`14
`1, 6, 8, 16
`8, 9, 11–16
`
`35 U.S.C. §
`
`References
`
`103(a)1
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Rye, 2 Skerlos3
`Rye, Skerlos, Woolgar4
`Rye, Skerlos, Gutman5
`Rye, Skerlos, Woolgar, Gutman
`Caris, 6 Dubil7
`Caris, Dubil, Woolgar
`
`
`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 Application Pub. No. 2005/0168658 Al, published Aug. 4,
`2005 (Ex. 1029, “Woolgar”).
`5 U.S. Patent No. 7,861,262 B1, filed Sept. 7, 2001, issued Dec. 28, 2010
`(Ex. 1030, “Gutman”).
`6 U.S. Patent No. 7,562,128 B1, filed Sept. 1, 2000, issued July 14, 2009
`(Ex. 1007, “Caris”).
`7 U.S. Patent No. 8,132,105 B1, filed Oct. 10, 2000, issued Mar. 6, 2012
`(Ex. 1008, “Dubil”).
`
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`Petitioner supports its challenge with a declaration from Dr. Samuel H. Russ
`(Ex. 1003).
`
`III. ANALYSIS
`“An inter partes review may not be instituted if the petition requesting
`the proceeding is filed more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). The
`parties agree that the Petition was filed more than one year after the date on
`which Petitioner was served in the related litigation with a complaint
`alleging infringement of the ’325 patent. Mot. 3 (Petitioner acknowledging
`that it “is now past the one-year statutory bar set forth in 35 U.S.C. § 315(b)
`to file an IPR against those claims”); Opp. 1 (Patent Owner asserting that
`Petitioner “seeks to flip the IPR process on its head by asking the Board to
`review two brand new IPR petitions that have been time-barred for over
`eight months” (emphasis omitted)).
`An exception exists to the statutory time bar: “The time limitation set
`forth in the preceding sentence [quoted above] shall not apply to a request
`for joinder under [35 U.S.C. § 315(c)].” 35 U.S.C. § 315(b). Petitioner
`seeks to apply that exception to join the related IPR and thereby to add
`issues to the related IPR. Petitioner argues, “[u]nder § 315(c), the Board has
`the discretion to allow a petitioner to be joined to a proceeding in which it is
`already a party. Section 315(c) also ‘provides discretion to allow joinder of
`new issues into an existing proceeding.’” Mot. 5 (quoting Proppant Express
`Investments v. Oren Techs., LLC, IPR2018-00914, Paper 38 at 4 (PTAB
`Mar. 13, 2019)). In arguing that Proppant controls and allows joinder of
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`issues, Petitioner highlights the Supreme Court’s determination that the
`Federal Circuit lacks appellate jurisdiction to review issues that are “closely
`tied to the application and interpretation of statutes” related to an IPR
`institution decision. Mot. 5–7; Thryv, Inc. v. Click-to-Call Tech, LP,
`140 S. Ct. 1367, 1373 (2020).
`Petitioner’s argument is nevertheless foreclosed by the Federal
`Circuit’s recent decision in Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020). In that decision, the Federal Circuit
`expressly considered the impact of Thryv, determining that the Board’s
`joinder decisions are “unlike” the challenges it is precluded from reviewing
`and “more like” those that it may review. Windy City, 973 F.3d at 1332.
`“Accordingly,” the Federal Circuit concluded, it “ha[s] jurisdiction to review
`the Board’s joinder decisions.” Id. And after reviewing such a joinder
`decision, the court further concluded that 35 U.S.C. § 315(c) “does not
`authorize same-party joinder, and does not authorize the joinder of new
`issues.” Id. at 1333–38.
`In accordance with the Federal Circuit’s decision, we deny
`Petitioner’s Motion for Joinder. Consequently, we conclude that the Petition
`is time-barred and that no exception applies under the facts before us. We
`therefore deny the Petition.
`
`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that the Petition is denied and no trial is instituted; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder is denied.
`
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`IPR2020-00951
`Patent 9,911,325 B2
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`PETITIONER
`Lestin L. Kenton
`Jon E. Wright
`Daniel S. Block
`Timothy L. Tang
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`lkenton-ptab@sternekessler.com
`jwright-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`ttang-ptab@sternekessler.com
`
`
`PATENT OWNER
`S. Benjamin 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
`cbean@alston.com
`derek.neilson@alston.com
`nick.tsui@alston.com
`
`James J. Lukas, Jr.
`Gary Jarosik
`Benjamin P. Gilford
`GREENBERG TRAURIG, LLP
`lukasj@gtlaw.com
`jarosikg@gtlaw.com
`gilfordb@gtlaw.com
`
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