Trials@uspto.gov
`571-272-7822
`
`Paper 11
`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.
`
`IPR2020-00952
`Patent 9,716,853 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`INTRODUCTION
`I.
`Roku, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 2, 6, and 8 (“the challenged claims”) of U.S. Patent
`No. 9,716,853 B2 (Ex. 1001, “the ’853 patent”). Paper 1 (“Pet.”). The
`Petition involves the same parties and the same patent at issue in an
`
`
`
`
`571-272-7822
`
`Paper 11
`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.
`
`IPR2020-00952
`Patent 9,716,853 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`INTRODUCTION
`I.
`Roku, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 2, 6, and 8 (“the challenged claims”) of U.S. Patent
`No. 9,716,853 B2 (Ex. 1001, “the ’853 patent”). Paper 1 (“Pet.”). The
`Petition involves the same parties and the same patent at issue in an
`
`
`
`
`
`IPR2020-00952
`Patent 9,716,853 B2
`instituted trial proceeding in IPR2019-01615 (“the related IPR”).
`Concurrent with its Petition, Petitioner also filed a Motion for Joinder with
`IPR2019-01615. Paper 2 (“Mot.”). Universal Electronics, Inc. (“Patent
`Owner”) filed both a Preliminary Response and an Opposition to Petitioner’s
`Joinder Motion. Papers 10 (“Prelim. Resp.”), 6 (“Opp.”). With our
`authorization, Petitioner filed a Reply to Patent Owner’s Opposition. Paper
`9 (“Reply”).
`For the reasons set forth below, we deny both the Petition and the
`Motion for Joinder.
`
`II. BACKGROUND
`A. 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
`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.
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`IPR2020-00952
`Patent 9,716,853 B2
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`
`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
`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
`
`3
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`IPR2020-00952
`Patent 9,716,853 B2
`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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`IPR2020-00952
`Patent 9,716,853 B2
`
`
`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.
`B. Challenged Claims
`Of the challenged claims, claim 1 is the sole independent claim.
`Challenged claims 2 and 8 depend from claim 1, and challenged claim 6
`
`5
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`IPR2020-00952
`Patent 9,716,853 B2
`depends from claim 2. 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.
`
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`IPR2020-00952
`Patent 9,716,853 B2
`
`C. Evidence Relied Upon
`Date
`US 2012/0249890 A1 Oct. 4, 2012
`
`Exhibit
`1005
`
`1006
`
`Reference
`Chardon et al.
`(“Chardon”)
`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).
`
`2006
`
`1010
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`Claims Challenged 35 U.S.C. §1 Reference(s)/Basis
`1, 2, 6, and 8
`103(a)
`Chardon, HDMI 1.3a, and Stecyk
`E. Real Parties in Interest
`The parties identify only themselves as real parties in interest. Pet.
`73; Paper 5, 1.
`
`F. 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
`’853 patent. Pet. 73; Paper 4, 1.
`
`
`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).
`
`7
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`IPR2020-00952
`Patent 9,716,853 B2
`The parties additionally identify the following proceedings as
`involving the ’853 patent: (1) Universal Electronics Inc. v. Funai Electric
`Co., No. 8:20-cv-0700 (C.D. Cal.); (2) Universal Electronics Inc. v. Funai
`Electric Co., No. 8:20-cv-0701 (C.D. Cal.); (3) Universal Electronics Inc. v.
`TCL Electronics Holdings Ltd., No. 8:20-cv-0704 (C.D. Cal.); (4) Universal
`Electronics Inc. v. TCL Electronics Holdings Ltd., No. 8:20-cv-3328 (C.D.
`Cal.); (5) Universal Electronics Inc. v. Hisense Co., No. 8:20-cv-0696 (C.D.
`Cal.); and (6) Certain Electronic Devices, Including Streaming Players,
`Televisions, Set Top Boxes, Remote Controllers, and Components Thereof,
`Inv. No. 337-3450 (ITC). Pet. 73; Paper 5, 1.
`The ’853 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, IPR2019-01614, IPR2019-01615, IPR2019-01619, IPR2019-01620,
`IPR2019-01621, IPR2020-00951, IPR2020-00953, and IPR2020-01012.
`See Paper 5, 1–2.
`The parties also note that the following application claims the benefit
`of the filing date of the ’853 patent: U.S. Patent Appl. No. 15/626,357 (now
`U.S. Patent No. 9,942,509). Pet. 73; Paper 4, 2.
`
`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
`
`8
`
`
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`IPR2020-00952
`Patent 9,716,853 B2
`alleging infringement of the ’853 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 a brand new IPR petition that has been time-barred for over eight
`months”).
`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
`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.
`
`9
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`IPR2020-00952
`Patent 9,716,853 B2
`“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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`10
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`IPR2020-00952
`Patent 9,716,853 B2
`PETITIONER:
`
`Jon E. Wright
`Lestin L. Kenton
`Daniel S. Block
`Ali Allawi
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jwright-PTAB@sternekessler.com
`lkenton-PTAB@sternekessler.com
`dblock-PTAB@sternekessler.com
`allawi-PTAB@stemekessler.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
`
`James J. Lukas, Jr
`Gary Jarosik
`Benjamin P. Gilford
`GREENBERG TRAURIG, LLP
`lukasj@gtlaw.com
`jarosikg@gtlaw.com
`gilfordb@gtlaw.com
`
`
`11
`
`
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