Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: July 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOE ANDREW SALAZAR,
`Patent Owner.
`____________
`
`Case IPR2018-00273
`Patent 5,802,467
`____________
`
`Before JAMESON LEE, KEVIN W. CHERRY, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: July 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOE ANDREW SALAZAR,
`Patent Owner.
`____________
`
`Case IPR2018-00273
`Patent 5,802,467
`____________
`
`Before JAMESON LEE, KEVIN W. CHERRY, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`HTC Corporation and HTC America, Inc. (collectively “Petitioner”)
`
`filed a Petition (Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to
`
`institute an inter partes review of claims 1‒7, 10, 14, 17, 23, 26‒32, and 34
`
`of U.S. Patent No. 5,802,467 (“the ’467 patent”). Joe Andrew Salazar
`
`(“Patent Owner”) filed a Preliminary Response. Paper 10 (“Prelim. Resp.”).
`
`To institute an inter partes review, we must determine that the information
`
`presented in the Petition shows “that there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” 35 U.S.C. § 314(a). Having considered both the Petition and
`
`the Preliminary Response, we determine that Petitioner has not demonstrated
`
`a reasonable likelihood that it would prevail in showing the unpatentability
`
`of any of claims 1‒7, 10, 14, 17, 23, 26‒32, and 34 of the ’467 patent. We,
`
`therefore, do not institute an inter partes review of claims 1‒7, 10, 14, 17,
`
`23, 26‒32, and 34.
`
`B.
`
`Related Matters
`
`Petitioner identifies the following proceedings as involving the ’467
`
`patent—Joe Andrew Salazar v. HTC Corporation, Case No. 2:16-cv-1096
`
`(E.D. Tex.). Pet. 2.
`
`C.
`
`The ’467 Patent
`
`The ’467 patent is directed to a system for wireless communications
`
`with external devices using radio frequency (RF) and infrared (IR) signals.
`
`Ex. 1001, Abstract. The system includes a handset and base station, each of
`
`which are capable of full two-way communication with external devices
`
`over RF or IR communication links. Id. at 6:31‒38. The external device
`
`2
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`may be, for example, an intercom, appliance, TV, VCR, cable box, sound
`
`system, or remote sensor. Id. at 6:39‒45.
`
`Figure 3, reproduced below, illustrates a block diagram of the handset.
`
`
`
`Figure 3 depicts a block diagram of the handset, including a radio frequency
`
`transceiver 50, infra-red frequency transceiver 60, and RF/IR selector 52.
`
`Id. at 20:12‒21. Microprocessor 30 generates command signals that are
`
`output to the RF/IR selector 52 for coupling to the radio frequency
`
`transceiver 50 or infra-red frequency transceiver 60, each of which may
`
`transmit the appropriate signal to various external devices, such as an
`
`intercom or alarm. Id. at 20:11‒67.
`
`Figure 5, reproduced below, illustrates a block diagram of the base
`
`station.
`
`3
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`IPR2018-00273
`Patent 5,802,467
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`
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`Figure 5 depicts a block diagram of the base station, including a radio
`
`frequency transceiver 160, infra-red frequency transceiver 170, and RF/IR
`
`selector 165. Id. at 22:63‒23:5. Like the handset, the base station
`
`microprocessor 200 generates command signals that are output to the RF/IR
`
`selector 165 for coupling to the radio frequency transceiver 160 or infra-red
`
`frequency transceiver 170, each of which may transmit the appropriate
`
`signal to various external devices, such as an intercom or alarm. Id. at
`
`23:23‒59.
`
`The ’467 patent discloses the base station and handset communicate
`
`with external devices using RF and IR signals that utilize communications
`
`protocols employed by the various manufacturers of the external devices.
`
`Id. at 7:34‒54. For example, a television made by one manufacturer may
`
`use a different communication protocol, including different command codes,
`
`than a television made by another manufacturer. Id. According to the ’467
`
`patent, prior art systems required a substantial amount of memory to store
`
`these various command code sets. Id. at 7:55‒8:16. The ’467 patent
`
`4
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`IPR2018-00273
`Patent 5,802,467
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`discloses reducing the amount of required memory by storing a finite set of
`
`parameters that can be used to recreate the various command code sets for
`
`different manufacturers. Id. at 8:22‒30.
`
`Claims 1 and 10 of the ’467 patent are independent and reproduced
`
`below:
`
`A communications, command, control and sensing system
`1.
`for communicating with a plurality of external devices
`comprising:
`
`a microprocessor for generating a plurality of control
`signals used to operate said system, said microprocessor creating
`a plurality of reprogrammable communication protocols. for
`transmission
`to
`said
`external devices wherein
`each
`communication protocol includes a command code set that
`defines the signals that are employed to communicate with each
`one of said external devices;
`
`to said microprocessor
`a memory device coupled
`configured to store a plurality of parameter sets retrieved by said
`microprocessor so as to recreate a desired command code set
`such that the memory space required to store said parameters is
`smaller than the memory space required to store said command
`code sets;
`
`a user interface coupled to said microprocessor for sending
`a plurality of signals corresponding to user selections to said
`microprocessor and displaying a plurality of menu selections
`available for the user's choice, said microprocessor generating a
`communication protocol in response to said user selections; and
`
`an infra-red frequency transceiver coupled to said
`microprocessor for transmitting to said external devices and
`receiving from said external devices, infra-red frequency signals
`in accordance with said communications protocols.
`
`in a
`10. A handset and a base station employed
`communications, command, control and sensing system for
`
`5
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`IPR2018-00273
`Patent 5,802,467
`
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`communicating with a plurality of external devices, said handset
`and base station each comprising:
`
`a microprocessor for generating a plurality of control
`signals used to operate said system, said microprocessor creating
`a plurality of communication protocols for transmission to said
`external devices, each protocol containing a plurality of control
`signals used to interface with an external device, wherein each
`communication protocol includes a command code set that
`defines the signals that are employed to communicate with each
`one of said external devices;
`
`to said microprocessor
`a memory device coupled
`configured to store a plurality of parameter sets retrieved by said
`microprocessor so as to recreate a desired command code set,
`such that the memory space required to store said parameters is
`smaller than the memory space required to store said command
`code sets;
`
`a user interface coupled to said microprocessor for sending
`a plurality of signals corresponding to user selections to said
`microprocessor. and displaying a plurality or menu selections
`available for user's choice, said microprocessor generating a
`communication protocol in response to said user selections;
`
`said
`to
`transceiver coupled
`frequency
`radio
`a
`microprocessor for transmitting to said external devices and
`receiving from said external devices, radio frequency signals at
`variable frequencies within a predetermined frequency range and
`in accordance with said communication protocols;
`
`an infra-red frequency transceiver coupled to said
`microprocessor for transmitting to said external devices and
`receiving from said external devices infra-red frequency signals
`in accordance with said communications protocols;
`
`a selector controlled by said microprocessor for enabling
`said radio frequency transceiver and said infra-red frequency
`transceiver, to transmit a desired command code set generated by
`said microprocessor via either radio frequency signals and infra-
`
`6
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`IPR2018-00273
`Patent 5,802,467
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`red signals as desired, and to receive a signal from any one of
`said external devices via either radio frequency signals and infra-
`red signals; and
`
`a data detector coupled to said selector for receiving
`signals transmitted from each one of said external devices, said
`data detector providing control signals received from said
`external devices to said microprocessor.
`
`Ex. 1001, 25:57‒26:17, 27:6‒52.
`
`
`D.
`
`Evidence Relied Upon
`
`Petitioner relies on the following references:
`
`
`
`
`
`
`Goldstein
`Keenan
`Thompson
`
`Reference
`U.S. Patent No. 5,410,326
`U.S. Patent No. 4,866,434
`U.S. Patent No. 5,465,401
`
`Exhibit
`Date
`issued Apr. 25, 1995 Ex. 1004
`issued Sept. 12, 1989 Ex. 1005
`issued Nov. 7, 1995 Ex. 1006
`
`Petitioner also relies on the Declaration of Andrew Wolfe, Ph.D.
`
`Ex. 1003.
`
`E.
`
`Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`References
`
`Basis
`
`Claims Challenged
`
`Goldstein and Keenan
`
`§ 103(a)
`
`1‒7, 10, 17, 23, 26‒32, and
`34
`
`Goldstein, Keenan, and
`Thompson
`
`
`§ 103(a)
`
`14
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`The ’467 patent has expired. The Board’s review of the claims of an
`
`expired patent is similar to that of a district court’s review. See In re
`
`7
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`Patent 5,802,467
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`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Specifically, we apply the
`
`principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
`
`2005) (en banc). Under that standard, claim terms are generally given their
`
`plain and ordinary meaning as would be understood by a person of ordinary
`
`skill in the art at the time of the invention and in the context of the entire
`
`patent disclosure. Id. at 1312–13. There are, however, two exceptions:
`
`“1) when a patentee sets out a definition and acts as his own lexicographer,”
`
`and “2) when the patentee disavows the full scope of a claim term either in
`
`the specification or during prosecution.” Thorner v. Sony Comp. Entm’t Am.
`
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). It is inappropriate to limit a
`
`claim to a preferred embodiment without a clear intent in the specification to
`
`redefine a claim term or a clear disavowal of claim scope. See id. at 1365–
`
`66.
`
`If an inventor acts as his or her own lexicographer, the definition must
`
`be set forth in the specification with reasonable clarity, deliberateness, and
`
`precision. See Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`
`1243, 1249 (Fed. Cir. 1998). It is improper to add into a claim an extraneous
`
`limitation, i.e., one that is added wholly apart from any need for the addition
`
`to interpret what is meant by the words or phrases in the claim. See
`
`Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); E.I.
`
`Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
`
`(Fed. Cir. 1988). Limitations that are not a part of the claim should not be
`
`imported into the claim. See SuperGuide Corp. v. DirecTV Enters., Inc.,
`
`358 F.3d 870, 875 (Fed. Cir. 2004).
`
`Only terms which are in controversy need to be construed, and only to
`
`the extent necessary to resolve the controversy. See Wellman, Inc. v.
`
`8
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`IPR2018-00273
`Patent 5,802,467
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`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Claim 1 recites, in relevant part, “said microprocessor creating a
`
`plurality of reprogrammable communication protocols for transmission to
`
`said external devices.” Patent Owner proposes construing the term
`
`“reprogrammable” to mean “a program that can be replaced with another.”
`
`Prelim. Resp. 3 (citing Ex. 2002,
`
`https://en.wiktionary.org/wiki/reprogrammable). Patent Owner contends
`
`this definition is consistent with the plain and ordinary meaning of the term
`
`“reprogrammable.” Id.
`
`Petitioner proposes construing “a microprocessor for generating a
`
`plurality of control signals used to operate said system, said microprocessor
`
`creating a plurality of reprogrammable communication protocols” to mean
`
`“a microprocessor configured to generate a plurality of control signals used
`
`to operate said system and configured to create a plurality of
`
`[reprogrammable] communication protocols.” Pet. 8‒9 (bracketing in
`
`original). Petitioner’s proposed construction does not explicitly define the
`
`term “reprogrammable.” Instead, Petitioner proposes clarifying the meaning
`
`of the larger claim phrase while maintaining the term “reprogrammable”
`
`within the phrase. Accordingly, Petitioner’s proposed construction of the
`
`claim phrase is consistent with application of the plain and ordinary meaning
`
`of the term “reprogrammable.”
`
`The ’467 patent does not define the term “reprogrammable” in the
`
`specification, and neither party argues the patentee disavowed the full scope
`
`of the claim in the specification or during prosecution. Accordingly, the
`
`plain and ordinary meaning of the term “reprogrammable” applies.
`
`9
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`The issue, then, is what is the plain and ordinary meaning of
`
`“reprogrammable”? Patent Owner proposes that the plain and ordinary
`
`meaning of “reprogrammable” is “a program that can be replaced with
`
`another.” Prelim. Resp. 3. This definition is supported by the dictionary
`
`cited by Patent Owner, consistent with the usage of the term in claim 1, and
`
`consistent with the objectives of the ’467 patent. See Ex. 1001, 2:47‒50 (“It
`
`is another object of the invention to provide a means for loading the
`
`microprocessor external memory of the handset or base station with updated
`
`or accessory programs and/or data bases.”); see also id. at 2:47‒64.
`
`Accordingly, we construe the term “reprogrammable” to mean “a program
`
`that can be replaced with another.”
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art with respect
`
`to the ’467 patent “would have had a Bachelor’s degree in Electrical
`
`Engineering or Computer Science, or an equivalent field, and approximately
`
`two years of experience in working with electronic devices that employ
`
`infrared and/or radio frequency communications or the equivalent.” Pet. 11.
`
`Petitioner’s position is supported by the Declaration of Dr. Wolfe. Ex. 1003
`
`¶¶ 18‒20.
`
`Patent Owner asserts that a person of ordinary skill in the art with
`
`respect to the ’467 patent “would have the equivalent of a four-year degree
`
`from an accredited institution (usually denoted as a B.S. degree) in electrical
`
`engineering or the equivalent, and approximately two years of professional
`
`experience. Additional graduate education could substitute for professional
`
`experience, while significant experience in the field might substitute for
`
`10
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`IPR2018-00273
`Patent 5,802,467
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`formal education.” Prelim. Resp. 4‒5. Patent Owner’s position is supported
`
`by the Declaration of Oded Gottesman, Ph.D. Ex. 2001 ¶ 7.
`
`The parties’ proposals are similar, although Petitioner proposes that a
`
`person of ordinary skill would possess more specific experience, while
`
`Patent Owner articulates that a person of ordinary skill would possess more
`
`particular knowledge. Under either party’s articulation, our conclusion is
`
`the same.
`
`C. Ground 1: Alleged Obviousness of Claims 1‒7, 10, 17, 23, 26‒
`32, and 34 over Goldstein and Keenan
`
`Goldstein discloses a universal remote control device programmed to
`
`operate a variety of consumer products. Ex. 1004, Abstract. The remote
`
`control establishes a bi-directional communication link with a cable box to
`
`receive programming information, including infrared codes, to control the
`
`variety of consumer products. Id. Goldstein discloses storing the infrared
`
`codes for operating “a virtually unlimited number of devices” on the remote
`
`control device. Id.
`
`Keenan discloses a universal remote control device that stores
`
`compressed device control codes for communicating with a variety of
`
`consumer products. Ex. 1005, Abstract. The control codes are stored as
`
`compressed data composed of two parts: format structure (FS) and
`
`compressed function table (CFT). Id. at 2:51‒61. The CFT consists of a
`
`block of memory containing pointers to locations in the FS where field data
`
`is located for all functions of a particular brand. Id. at 4:9‒16. Many brands
`
`may share the same FS and some may share the same CFT, allowing for
`
`reduced memory required for storing data for many devices. Id. at 2:62‒
`
`3:10.
`
`11
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`IPR2018-00273
`Patent 5,802,467
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`1. Claim 1
`
`Petitioner contends Goldstein discloses “a microprocessor for
`
`generating a plurality of control signals used to operate said system, said
`
`microprocessor creating a plurality of reprogrammable communication
`
`protocols, for transmission to said external devices.” Pet. 20, 21, 23.
`
`Specifically, Petitioner contends Goldstein discloses “[t]he various forms of
`
`data received are in serial format and are received by a microprocessor 89,
`
`which may be the Motorola 68000 processor, or an equivalent.” Id. at 23
`
`(citing Ex. 1004, 12:34‒36). Petitioner further contends Goldstein teaches
`
`the “programmable universal remote control device is bidirectional in that it
`
`can receive data for programming the device as well as issue commands to
`
`one or more devices to be controlled.” Id. at 23 (citing Ex. 1004, 3:14‒21).
`
`Petitioner also relies on the testimony of Dr. Wolfe, who testifies
`
`Goldstein discloses a microprocessor that generates control signals to
`
`operate the system. Ex. 1003 ¶¶ 41‒43 (citing Ex. 1004, Fig. 10).
`
`Dr. Wolfe further testifies “Goldstein describes IR codes for controlling
`
`various devices. . . . These IR codes define the signals that are used to
`
`communicate with the external devices.” Ex. 1003 ¶ 43 (citing Ex. 1004,
`
`8:9‒14, 13:20‒26). Dr. Wolfe also testifies “Keenan also describes
`
`communication protocols that include a command codes set that defines the
`
`signals used to communicate with external devices.” Ex. 1003 ¶ 44.
`
`Patent Owner argues Goldstein and Keenan do not teach or suggest a
`
`microprocessor which “creates a plurality of reprogrammable
`
`communication protocols,” as claimed. Prelim. Resp. at 15‒18. In
`
`particular, Patent Owner argues Petitioner ignores the “reprogrammable”
`
`limitation and has failed to show the combination of Goldstein and Keenan
`
`12
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`teaches a microprocessor creating reprogrammable communication
`
`protocols. Id. at 15‒20. Patent Owner further contends Dr. Wolfe does not
`
`address this limitation in his testimony. Id. at 20. According to Patent
`
`Owner, Goldstein teaches reprogramming the remote control is undesirable,
`
`and the Petition does not provide sufficient reasoning or facts why an
`
`ordinarily skilled artisan would have found it obvious to combine Goldstein
`
`and Keenan to achieve a microprocessor which “creates a plurality of
`
`reprogrammable communication protocols.” Id. at 20.
`
`The portions of Goldstein cited by Petitioner teach a remote control
`
`device with a microprocessor that receives data for programming the device.
`
`Ex. 1004 at 3:14‒21, 12:34‒36. The remote control device captures data to
`
`use in placing a telephone call (id. at 2:29‒44) and downloads operating
`
`system instructions to its memory (id. at 12:34‒47). The remote control
`
`device may request IR codes or programming data from its bidirectional
`
`communication link to the cable converter (id. at 12:13‒22) or it may be
`
`programmed via a telephone line (id. at 14:56‒15:19). The cited portions of
`
`Goldstein also teach that the remote control devices generate icons on a
`
`touch-sensitive display. Id. at 7:4‒22. None of the cited portions of
`
`Goldstein address whether the IR codes that the remote control device uses
`
`to communicate with external devices are reprogrammable. That is, none of
`
`the cited portions of Goldstein address whether the IR codes may be
`
`replaced by other IR codes in accordance with the plain and ordinary
`
`meaning of “reprogrammable,” as discussed above.
`
`Notably, neither the Petition nor Dr. Wolfe’s Declaration explain how
`
`these cited portions of Goldstein teach a “microprocessor creating a plurality
`
`of reprogrammable communication protocols” wherein each of these
`
`13
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`reprogrammable communication protocols “includes a command code set
`
`that defines the signals that are employed to communicate with each one of
`
`said external devices.” Dr. Wolfe testifies that “Goldstein describes IR
`
`codes for controlling various external devices” and that the “IR codes define
`
`the signals that are used to communicate with the external devices.”
`
`Ex. 1003, ¶ 43. However, Dr. Wolfe’s testimony does not explain how these
`
`IR codes satisfy the reprogrammable communication protocols limitation.
`
`See id.
`
`Petitioner further cites Keenan as teaching this limitation, without
`
`explanation. See Pet. 24‒25 (citing Ex. 1005, Abstract, Fig. 4, 1:11‒16,
`
`1:41‒45, 5:49‒51, 6:16‒20). Keenan teaches a multi-brand universal remote
`
`control that stores compressed device control codes to make efficient use of
`
`memory space. Ex. 1005, Abstract. The cited portions of Keenan teach
`
`multi-brand universal remote control devices that control a number of
`
`consumer devices. Id. at 1:11‒16. Keenan teaches the remote control
`
`device decompresses compressed codes to generate command signals. Id. at
`
`1:41‒45, 6:16‒20. None of these cited portions of Keenan address whether
`
`the command codes that are stored in the compressed format structure (FS)
`
`and compressed function table (CFT) are reprogrammable communication
`
`protocols, as claimed.
`
`Notably, neither the Petition nor Dr. Wolfe’s Declaration explain how
`
`these cited portions of Keenan teach a “microprocessor creating a plurality
`
`of reprogrammable communication protocols” wherein each of these
`
`reprogrammable communication protocols “includes a command code set
`
`that defines the signals that are employed to communicate with each one of
`
`said external devices.” Dr. Wolfe testifies Keenan “describes
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`14
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`communication protocols that include a command codes set that defines the
`
`signals used to communicate with external devices.” Ex. 1003, ¶ 44.
`
`However, Dr. Wolfe’s testimony does not include any explanation as to how
`
`Keenan’s disclosure satisfies the reprogrammable communication protocol
`
`limitations, as claimed. See id.
`
`Moreover, neither the Petition nor Dr. Wolfe’s testimony address how
`
`an ordinarily skilled artisan would combine Goldstein and Keenan to satisfy
`
`the limitation “a microprocessor creating a plurality of reprogrammable
`
`communication protocols.” Instead, the Petition provides conclusory
`
`assertions that the combination of Goldstein and Keenan teaches this
`
`limitation. See Pet. 20‒21, 23‒25. Similarly, Dr. Wolfe offers conclusory
`
`testimony that Goldstein teaches this limitation. See Ex. 1003, ¶¶ 41, 43.
`
`Dr. Wolfe does not testify that Keenan teaches this limitation. See id. at
`
`¶¶ 41‒43. Petitioner’s conclusory assertions that the applied prior art
`
`teaches the “a microprocessor creating a plurality of reprogrammable
`
`communication protocols,” as claimed are entitled to little weight. See 37
`
`C.F.R. § 42.56(a) (“Expert testimony that does not disclose the underlying
`
`facts or data on which the opinion is based is entitled to little or no
`
`weight.”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
`
`776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert
`
`opinion going to factual determinations, however, may render the testimony
`
`of little probative value in a validity determination.”).
`
`Accordingly, Petitioner has failed to explain how the applied prior art
`
`references teach or suggest “a microprocessor creating a plurality of
`
`reprogrammable communication protocols,” as claimed. For these reasons,
`
`we conclude the Petition fails to show a reasonable likelihood of establishing
`
`15
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`IPR2018-00273
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`that the combination of Goldstein and Keenan teaches or suggests a
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`“microprocessor creating a plurality of reprogrammable communication
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`protocols,” as recited in claim 1. We, therefore, conclude that Petitioner has
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`not demonstrated a reasonable likelihood of prevailing on its challenge of
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`independent claim 1.
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`Independent claim 34 recites, in relevant part, “a microprocessor for
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`generating a plurality of control signals used to operate said system, said
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`microprocessor creating a plurality of reprogrammable communication
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`protocols for transmission to said external devices.” (emphasis added).
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`Petitioner contends the combination of Goldstein and Keenan teaches this
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`limitation for the same reasons as claim 1. See Pet. 40‒41. We, therefore,
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`conclude that Petitioner has not demonstrated a reasonable likelihood of
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`prevailing on its challenge of independent claim 34 for the same reasons as
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`independent claim 1.
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`We also conclude Petitioner has not demonstrated a reasonable
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`likelihood of prevailing on claims 2‒7 and 27‒30, which depend from claim
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`1, for the same reasons.
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`2. Claim 10
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`Claim 10 recites, in relevant part, “A handset and a base station
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`employed in a communications, command, control and sensing system for
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`communicating with a plurality of external devices, said handset and base
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`station each comprising. . . .” (emphasis added). The claim further recites
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`components, including a “radio frequency transceiver coupled to said
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`microprocessor [for] transmitting to said external devices and receiving from
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`said external devices, radio frequency signals at variable frequencies within
`
`a predetermined frequency range and in accordance with said
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`IPR2018-00273
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`communication protocols.” Accordingly, claim 10 requires a handset and a
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`base station that each comprise the recited “radio frequency transceiver.”
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`Each of these radio frequency transceivers must transmit “to said external
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`devices . . . in accordance with said communication protocols,” which refers
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`to the communication protocols that are created by the respective
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`microprocessor and which include “a command code set that defines the
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`signals that are employed to communicate with each one of said external
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`devices.”
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`Petitioner contends the combination of Goldstein and Keenan teaches
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`claim 10. In particular, Petitioner contends Goldstein teaches a base station
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`that includes an “RF transceiver (FM transmitter 153 and FM receiver 154).”
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`Pet. 37. Petitioner asserts Goldstein teaches this claim element as described
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`with respect to claim 2 and further cites Goldstein as teaching the following:
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`The FM transmitter 153 will transmit data on a second carrier to
`the universal remote control device. The FM receiver 154, with
`antenna 155, forms a second half of a bidirectional link with the
`remote control device and telephone interface. Data received is,
`in tum, connected to the data switch 152 for routing the received
`data to the microprocessor unit 137 for decoding and execution.
`
`Pet. 41 (citing Ex. 1004 at 17:43‒50). Petitioner further relies on the
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`testimony of Dr. Wolfe. Id. (citing Ex. 1003 ¶¶ 74‒75).
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`Goldstein teaches a cable converter, which Petitioner cites for the
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`“base station” limitation. See Pet. 39 (citing Fig. 14). The cable converter
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`includes an FM transmitter 153 and FM receiver 154. Ex. 1004, 17:23‒50.
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`The FM transmitter 153 transmits data to the universal remote control device
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`(id., 17:43‒44), which Petitioner cites as the claimed “handset” (Pet. 38).
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`The FM receiver 154 forms the second half of a bidirectional link with the
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`17
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`remote control device. Ex. 1004, 17:44‒47. Goldstein teaches this
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`bidirectional link between the cable converter and remote control device
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`may be used by the remote control device to make telephone calls using a
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`telephone interface connected to the cable converter. Id. at 17:23‒50.
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`Petitioner has failed to explain how the combination of Goldstein and
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`Keenan teaches a “base station” that comprises a “radio frequency
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`transceiver” that communicates with “external devices” “in accordance with
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`said communication protocols.” Petitioner cites Goldstein’s cable converter
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`and its FM transmitter 153 and FM receiver 154 as comprising the claimed
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`“radio frequency transceiver,” but these components merely establish
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`communication with the remote control device, not external devices as
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`required. See Pet. 41 (citing Ex. 1004, 17:43‒50). Moreover, Dr. Wolfe’s
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`testimony does not account for this limitation. Instead, Dr. Wolfe testifies
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`“Goldstein discloses an FM transmitter 153 and FM receiver 154 on the
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`cable converter” and “[a] person of ordinary skill in the art would
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`understand that radio frequency signals can be transmitted at variable
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`frequencies within a frequency range.” Ex. 1003 ¶ 75. Dr. Wolfe’s
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`testimony makes no mention of the requirement that these communications
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`be with an external device and be made in accordance with said
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`communication protocols, as claimed.
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`The Petition also incorporates the discussion of claim 2 for this
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`limitation, but that does not remedy the failure to show a reasonable
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`likelihood of establishing that Goldstein and Keenan teach a “base station”
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`that comprises a “radio frequency transceiver” that communicates with
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`“external devices” “in accordance with said communication protocols.”
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`Specifically, with respect to claim 2, Petitioner asserts Goldstein teaches a
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`selector (glue logic 95 and glue logic 145) for enabling an RM transceiver
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`and IR frequency transceiver to transmit a desired command code set to an
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`external device via either RF signals or IR signals. Pet. 29 (citing Ex. 1004,
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`13:15‒35, 17:8‒12). General logic interface (glue) logic 95 is a component
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`of the remote control device depicted in Figure 10. Ex. 1003, Fig. 10. Glue
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`logic 145 is a component of the cable converter depicted in Figure 14. Id.,
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`Fig. 14. Regarding glue logic 145, the cited portion of Goldstein merely
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`teaches that glue logic 145 provides various enabling signals in accordance
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`with the instruction set being executed by the microprocessor. Id. at 17:8‒
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`12. This teaching makes no mention of glue logic 145 enabling RF
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`communication with any external devices. See id.
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`Petitioner further relies on the testimony of Dr. Wolfe for claim 2.
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`See Pet. 29‒30 (citing Ex. 1003 ¶¶ 55‒59). Dr. Wolfe testifies “[b]ecause
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`Goldstein teaches controlling external devices via infrared signals, and also
`
`teaches an RF transceiver, a person of ordinary skill in the art at the time
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`would understand that RF signals could also be used to transmit to and
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`receive from external devices that supported RF communications.”
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`Ex. 1003 ¶ 57 (emphasis added). But the issue is not whether one with
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`ordinary skill in the art “could” perform an operation but whether one with
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`ordinary skill in the art, without hindsight based on the disclosure of the
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`’467 patent, would have reason to do so. See Belden Inc. v. Berk-Tek LLC,
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`805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a
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`skilled artisan not only could have made but would have been motivated to
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`make the combinations or modifications of prior art to arrive at the claimed
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`invention”) (emphasis in original); Fresenius USA, Inc. v. Baxter Intern.,
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`Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009).
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`Dr. Wolfe further testifies glue logic 95 is a component of the remote
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`control device, as noted above (see Ex. 1003 ¶ 58). According to Dr. Wolfe,
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`an ordinarily skilled artisan would have understood that glue logic 95
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`enables RF or IR transmissions to external devices. Ex. 1003 ¶ 59. Even
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`accepting Dr. Wolfe’s testimony as true, this testimony is limited to the
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`remote control device and its transmission of RF signals to external devices.
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`Dr. Wolfe’s testimony does not address a “base station” that comprises a
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`“radio frequency transceiver” that transmits to an “external device . . . in
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`accordance with said communication protocols,” as claimed. See Ex. 1003
`
`¶¶ 55
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