Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 9
`Date: 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.
`____________
`
`IPR2020-01012
`Patent 7,589,642 B1
`____________
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`
`BOUCHER, 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
`
`Roku, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1, 2, 5–7, 19, and 20
`of U.S. Patent No. 7,589,642 (Ex. 1001, “the ’642 patent”). Paper 1 (“Pet.”).
`
`
`571-272-7822
`
`
`
`
`
`Paper 9
`Date: 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.
`____________
`
`IPR2020-01012
`Patent 7,589,642 B1
`____________
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`
`BOUCHER, 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
`
`Roku, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1, 2, 5–7, 19, and 20
`of U.S. Patent No. 7,589,642 (Ex. 1001, “the ’642 patent”). Paper 1 (“Pet.”).
`
`
`
`IPR2020-01012
`Patent 7,589,642 B1
`
`The Petition involves the same parties and the same patent at issue in an
`instituted trial proceeding in IPR2019-01612 (“the related IPR”).
`Concurrent with its Petition, Petitioner also filed a Motion for Joinder with
`IPR2019-01612. Paper 2 (“Mot.”). Universal Electronics, Inc. (“Patent
`Owner”) filed both a Preliminary Response and an Opposition to Petitioner’s
`Joinder Motion. Papers 8 (“Prelim. Resp.”), 6 (“Opp.”). With our
`authorization, Petitioner filed a Reply to Patent Owner’s Opposition. Paper
`7 (“Reply”).
`For the reasons set forth below, we deny both the Petition and the
`Motion for Joinder.
`
`
`I. BACKGROUND
`A. The ’642 Patent
`The ’642 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, 1:6–9. 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 1:25–28. A set of key codes
`associated with a particular electronic device is referred to as a “codeset.”
`Id. at 1:23–25. 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 1:39–47. Accordingly, the inventor of the ’642 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
`
`2
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`IPR2020-01012
`Patent 7,589,642 B1
`
`associated with the selected electronic consumer device to be stored on the
`remote control device.” Id. at 1:51–55.
`Figure 1 of the ’642 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 3:1–3. 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 3:5–8; 3:18–21, 3:27–28. With remote control device 11, a user
`responds to on-screen displays 15 of television set 14, generated by key code
`
`3
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`IPR2020-01012
`Patent 7,589,642 B1
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`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 3:12–
`16, 3:27–33. 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 3:27–35.
`An alternative embodiment uses an “autoscan functionality” in which
`the user is “prompted by successive screens on display 15 to push the power-
`on key of remote control device 11 multiple times.” Id. at 7:60–66. As the
`user repeatedly presses the power-on key, “key code generator device 12 in
`turn generates key codes using different codesets until the electronic
`consumer device performs a desired function,” such as turning on. Id. at
`8:6–10. The user is prompted to stop pressing the power-on key once the
`user sees the desired function being performed by first electronic consumer
`device 13. Id. at 8:10–13. “When the user stops pressing the power-on key,
`then the key code generator device 12 identifies the codeset of the last
`transmitted key code to be the codeset used by the electronic consumer
`device.” Id. at 8:15–18.
`The ’642 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 8:32–35.
`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 8:35–43.
`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
`
`4
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`IPR2020-01012
`Patent 7,589,642 B1
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`key code signal 19.” Id. at 4:35–37. Figure 5 of the ’642 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 4:66–67. 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 5:37–44. 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 5:64–6:1, 8:6–
`18.
`
`
`
`B. Illustrative Claim
`Independent claim 1 is illustrative of the challenged claims and is
`reproduced below.
`1. A method comprising:
`
`(a) receiving a keystroke indicator signal from a remote
`control device, wherein the keystroke indicator signal indicates
`a key on said remote control device that a user has selected;
`
`(b) generating a key code within a key code generator
`device using the keystroke indic[a]tor signal;
`
`5
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`IPR2020-01012
`Patent 7,589,642 B1
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`
`(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 to said remote control device.
`
`Ex. 1001, 10:11–21.
`
`
`C. Evidence
`Petitioner relies on the following references:
`Mishra
`US 2001/0005197 A1
`June 28, 2001
`Dubil
`US 8,132,105 B1
`Mar. 6, 2012
`Rye
`US 2004/0080428 A1
`Apr. 29, 2004
`
`
`
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`In addition, Petitioner relies on a Declaration by Samuel H. Russ,
`Ph.D. Ex. 1003.
`
`
`35 U.S.C. §1
`
`References
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 2, 5–7, 19, and 20 on the following
`grounds. Pet. 3.
`Claim(s)
`Challenged
`1, 6, 7, 19, 20
`2, 5
`
`
`
`103(a)
`103(a)
`
`Mishra, Dubil
`Rye, Dubil
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended various provisions of 35 U.S.C. Because
`the ’642 patent was filed before March 16, 2013 (the effective date of the
`relevant amendment), the pre-AIA versions of those provisions apply.
`
`6
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`IPR2020-01012
`Patent 7,589,642 B1
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`
`E. Real Parties in Interest
`The parties identify only themselves as real parties in interest.
`Pet. 52; Paper 4, 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
`’642 patent. Pet. 52; Paper 4, 1.
`The parties additionally identify the following proceedings as
`involving the ’642 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-TA-1200 (ITC). Pet. 52–53; Paper 4, 1.
`The ’642 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, IPR2019-01613,
`IPR2019-01614, IPR2019-01615, IPR2019-01619, IPR2019-01620,
`IPR2019-01621, IPR2020-00952, IPR2020-00953, and IPR2020-00951.
`See Pet. 53; Paper 4, 1–2. The parties also note that the following
`applications claim the benefit of the filing date of the ’642 patent: U.S.
`Patent Appl. No. 12/462,526 (now U.S. Patent No. 8,004,389); U.S. Patent
`Appl. No. 13/068,820 (now U.S. Patent No. 9,355,553); U.S. Patent Appl.
`
`7
`
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`IPR2020-01012
`Patent 7,589,642 B1
`
`No. 15/153,905 (now U.S. Patent No. 9,911,325); U.S. Patent Appl.
`No. 15/864,339; and U.S. Patent Appl. No. 16/057,544. Pet. 53; Paper 4, 2–
`3.
`
`
`
`II. 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 ’642 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 also 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
`
`8
`
`
`
`IPR2020-01012
`Patent 7,589,642 B1
`
`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. 5–8; 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.
`
`
`III. 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.
`
`9
`
`
`
`IPR2020-01012
`Patent 7,589,642 B1
`
`PETITIONER:
`
`Jon Wright
`Lestin Kenton
`Daniel Block
`Tim Tang
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`Jwright-ptab@sternekessler.com
`Lkenton-ptab@sternekessler.com
`Dblock-ptab@sternekessler.com
`Ttang-ptab@sternekessler.com
`
`
`PATENT OWNER:
`
`Benjamin Pleune
`Ryan Koppelman
`Thomas Davison
`H. James Abe
`Caleb Bean
`Derek Neilson
`Nicholas 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 R. Jarosik
`Benjamin P. Gilford
`GREENBERG TRAURIG, LLP
`lukasj@gtlaw.com
`jarosikg@gtlaw.com
`gilfordb@gtlaw.com
`
`10
`
`
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