Universal Electronics, Inc.

Patent Trials and Appeals Board

Jul 13, 2021

IPR2021-00299 (P.T.A.B. Jul. 13, 2021)

Trials@uspto.gov Paper: 9
571-272-7822 Date: July 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ROKU, INC.,
Petitioner,

v.

UNIVERSAL ELECTRONICS, INC.,
Patent Owner.
____________

IPR2021-00299
Patent 10,593,196 B2
____________

Before PATRICK M. BOUCHER, MINN CHUNG, and
RUSSELL E. CASS, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)

Roku, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
§§ 311–319 to institute an inter partes review of claims 1–22 of U.S. Patent
No. 10,593,196 B2 (Ex. 1001, “the ’196 patent”; Ex. 2004 (Certificate of
Correction adding Brian Barnett as an inventor)). Paper 2 (“Pet.”).
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Universal Electronics, Inc. (“Patent Owner”) filed a Preliminary Response.
Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply
and Patent Owner filed a Sur-reply. Papers 7 (“Reply”), 8 (“Sur-reply”).
We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. For
the reasons set forth below, we exercise our discretion under 35 U.S.C.
§ 314(a) and decline to institute an inter partes review.

I. BACKGROUND
A. The ’196 Patent
The ’196 patent generally describes using devices to control various
appliances, and illustrates specific systems that “may enable a single
controlling device to command the operation of all appliances in a home
theater system while coordinating available methods of controlling each
particular appliance in order to select the best and most reliable method for
issuing each command to each given device.” Ex. 1001, 2:33–38. Figure 1
of the ’196 patent is reproduced below.
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Figure 1 illustrates an exemplary system in which a “Universal Control
Engine” (“UCE”) is used to command operation of several appliances. Id. at
3:1–3. In the illustration, UCE 100 may be used to control television 106,
combined cable set-top box and digital video recorder 110, DVD player 108,
and AV receiver 120. Id. at 3:42–47. Appliance commands may be issued
by UCE 100 in response to infrared request signals 116 received from
remote control device 102 or radio-frequency request signals 118 received
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from a software app 124 resident on smart device 104. Id. at 3:54–61.
Transmission of the requested appliance commands from UCE 100 to the
various appliances may take the form of infrared signals 114 or Consumer
Electronic Control (“CEC”) commands issued over wired HDMI interface
112, “as appropriate to the capabilities of the particular appliance to which
each command may be directed.” Id. at 3:61–66. For instance, UCE 100
might transmit infrared commands to AV receiver 120, but transmit CEC
commands to television 106. Id. at 3:67–4:14. During an initial setup
procedure, UCE 100 uses various identification queries to the appliances to
build a linked “command matrix,” such as illustrated in Figure 7 of the ’196
patent (not reproduced here), with data cells corresponding to specific
commands for specific appliances. Id. at 8:49–10:19.
Figure 13 of the ’196 patent is reproduced below.
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Figure 13 is a flow diagram that illustrates a series of steps performed by
UCE 100 to convey a function command to an appliance in accordance with
a command request received from a controlling device, such as remote
control 102 or smart device 104. Id. at 11:40–49. The procedure begins at
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step 1302 by retrieving the corresponding data element from the command
matrix. Id. For example, if a “TV power on” request is received from
remote control 102, a data element may be retrieved that indicates the
command is to be communicated to television 106 using an HDMI CEC
command. Id. at 11:49–55.
Presuming the command matrix element is valid (i.e., not null, as
checked at step 1304), UCE 100 may communicate the corresponding
function to the target appliance using the indicated command value and
transmission method (such as by issuing a CEC “power on” command via
the HDMI interface). Id. at 11:55–12:10. If a confirmation mechanism is
supported (as checked at step 1308) but no confirmation is received (as
checked at step 1310), UCE 100 determines at step 1312 whether an
alternative method is available to communicate the command to the target
appliance. Id. at 12:10–28. This may be accomplished by accessing a
secondary command matrix provisioned for the use of alternative command
methods. Id. at 12:28–32, 7:42–46. If such an alternative command exists,
the substitute command value and transmission method are retrieved and
processed at step 1316 to initiate the alternative attempt at executing the
command. Id. at 12:32–35. Thus, in the “TV power on” example, if the
CEC “power on” command cannot be confirmed, an infrared “power on”
command might be attempted as a substitute. Id. at 12:35–42.

B. Illustrative Claim
Independent claim 1 (the ’196 patent’s only independent claim) is
illustrative of the challenged claims and is reproduced below.
1. A first media device, comprising:
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a high-definition multimedia interface communications
port, coupled to the processing device, for communicatively
connecting the first media device to a second media device;
a transmitter, coupled to the processing device, for
communicatively coupling the first media device to a remote
control device; and
a memory device, coupled to the processing device,
having stored thereon processor executable instruction;
wherein the instructions, when executed by the
processing device, cause the first media device to be configured
to transmit a first command directly to the second media device,
via use of the high-definition multimedia communications port,
to control an operational function of the second media device
when a first data provided to the first media device indicates
that the second media device will be responsive to the first
command, and cause the first media device to be configured to
transmit a second data to a remote control device, via use of the
transmitter, for use in configuring the remote control device to
transmit a second command directly to the second media
device, via use of a communicative connection between the
remote control device and the second media device, to control
the operational function of the second media device when the
first data provided to the first media device indicates that the
second media device will be unresponsive to the first command.

Ex. 1001, 17:2–32.

C. Evidence
Petitioner relies on the following references:
Chardon US 2012/0249890 A1 Oct. 4, 2012 Ex. 1005
Barnett US 9,019,435 B2 Apr. 28, 2015 Ex. 1006
Mishra US 2001/0005197 A1 June 28, 2001 Ex. 1009

HDMI Licensing, LLC, High-Definition Multimedia Interface, Specification
Version 1.3a (November 10, 2006) (Ex. 1010) (“HDMI 1.3a”)

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In addition, Petitioner relies on a Declaration by Samuel H. Russ,
Ph.D. Ex. 1003.

D. Asserted Grounds of Unpatentability
Petitioner challenges claims 1–22 on the following grounds. Pet. 3.
Claim(s)
Challenged
35 U.S.C. § References
1, 3, 6–22 102(e)(2) Barnett
1–18, 21, 22 103(a) Chardon, HDMI 1.3a, Mishra

E. Real Parties in Interest
The parties identify only themselves as real parties in interest.
Pet. 79; Paper 3, 1.

F. Related Matters
Both parties identify Universal Electronics, Inc. v. Roku, Inc.,
No. 8:20-cv-00701 (C.D. Cal.) (“the related district court proceeding”), and
Certain Electronic Devices, Including Streaming Players, Televisions, Set
Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-TA-
1200 (USITC) (“the related ITC Investigation”), as involving the ’196
patent. Pet. 79; Paper 3, 1. Patent Owner additionally identifies the
following district court proceedings as related matters: (1) Universal
Electronics, Inc. v. Roku, Inc., No. 8:18-cv-01580 (C.D. Cal.); (2) Universal
Electronics, Inc. v. TCL Electronics Holdings Ltd., No. 8:20-00704 (C.D.
Cal.); (3) Universal Electronics, Inc. v. Hisense Co., Ltd., No. 8:20-00696
(C.D. Cal.); and (4) Universal Electronics, Inc. v. Funai Electric Company,
Ltd., No. 8:20-cv-00700 (C.D. Cal.). Paper 3, 1.
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The ’196 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, IPR2020-00952, IPR2020-01012,
IPR2021-00261, IPR2021-00262, IPR2021-00263, IPR2021-00264, and
IPR2021-00455. See Pet. 79–80; Paper 3, 1–2.

II. DENIAL UNDER 35 U.S.C. § 314(a)
A. Background
As noted above, the ’196 patent is the subject of two parallel
proceedings, namely the related district court proceeding and the related ITC
Investigation. Supra, § I.F. Patent Owner asks that we exercise our
discretion to deny the Petition based on the state of the related ITC
Investigation, but does not make a similar request based on the related
district court proceeding. Prelim. Resp. 1–2. In particular, Patent Owner
characterizes the state of the related ITC Investigation as “in its final stages,
with fact and expert discovery already closed and the hearing already held.”
Id. at 1.
The essential facts regarding the state of the related ITC Investigation
as summarized by Patent Owner are not disputed by Petitioner. More than a
year ago, on April 16, 2020, Patent Owner filed its complaint before the ITC
against Petitioner, asserting infringement of the ’196 patent. See id. at 3.
The ITC instituted its investigation on May 18, 2020, and an evidentiary
hearing was held on April 19–23, 2021. Id.; see Ex. 2001. An Initial
Determination is expected from the ITC Administrative Law Judge on July
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9, 2021, and a Final Determination is expected from the Commission on
November 10, 2021. Prelim. Resp. 3; see Ex. 2001.

B. Analysis
Institution of an inter partes review is discretionary. See 35 U.S.C.
§ 314(a) (2018) (stating “[t]he Director may not authorize an inter partes
review to be instituted unless the Director determines 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”) (emphasis added); Harmonic Inc. v. Avid Tech.,
Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but
never compelled, to institute an IPR proceeding.”). In determining whether
to exercise that discretion on behalf of the Director, we are guided by the
Board’s precedential decision in NHK Spring Co. v. Intri-Plex Techs., Inc.,
IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018).
The Board has held that the advanced state of either a parallel district
court action or a parallel ITC investigation may warrant exercising
discretion to deny a petition for inter partes review. See NHK Spring Co. v.
Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12,
2018) (precedential) (“NHK”); Apple Inc. v. Fintiv Inc., IPR2020-00019,
Paper 11 at 5–6, 8 (PTAB March 20, 2020) (precedential) (“Fintiv”); Patent
Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58
& n.2, available at https://www.uspto.gov/TrialPracticeGuideConsolidated
(“Trial Practice Guide”). In evaluating whether to do so, we consider the
following factors in assessing “whether efficiency, fairness, and the merits
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support the exercise of authority to deny institution in view of an earlier trial
date in the parallel proceeding”:
1. whether the court granted a stay or evidence exists that one
may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected
statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and the
parties;
4. overlap between issues raised in the petition and in the
parallel proceeding;
5. whether the petitioner and the defendant in the parallel
proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of
discretion, including the merits.
Fintiv at 5–6. In evaluating these factors, we “take[] a holistic view of
whether efficiency and integrity of the system are best served by denying or
instituting review.” Id. at 6.

1. Possibility of Stay
A stay of a related proceeding pending resolution of the PTAB trial
“allays concerns about inefficiency and duplication of efforts.” Fintiv at 6.
Although the related district court proceeding has been stayed, the parties
agree that a stay of the related ITC Investigation is “unlikely,” with Patent
Owner representing (and Petitioner not disputing) that “Petitioner has not
requested a stay, and Petitioner has given no indication that it will request a
stay.” Pet. 76; Prelim. Resp. 7. Even if Petitioner were to request a stay,
Patent Owner continues,
it is unlikely that the ITC would grant a stay because (i) the ITC
Investigation is in its final stages, with fact and expert
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discovery already concluded, and all pre-trial disclosures and
preparation, including motion in limine briefing complete;
(ii) the hearing in the ITC Investigation began on April 19th and
concluded on April 23rd; and (iii) the parties will have
completed post-trial briefing and the ALJ’s Initial
Determination will have already issued by the time the
institution decision issues in this proceeding in July 2021.

Prelim. Resp. 7–8.
In light of the parties’ agreement that a stay of the related ITC
Investigation is unlikely, we determine that this factor weighs in favor of a
denial of the Petition.

2. Schedules
According to Fintiv, “[i]f the court’s trial date is earlier than the
projected statutory deadline, the Board generally has weighed this fact in
favor of exercising authority to deny institution.” Fintiv at 9. In addressing
this factor, Patent Owner compares the November 10, 2021, anticipated date
for the ITC’s Final Determination with the statutory deadline for a final
written decision in this proceeding. Prelim. Resp. 9. In contrast, Petitioner
appears to compare the date for the ITC’s Initial Determination with the date
of our Institution Decision in this proceeding. See Pet. 78 (“First, although
the ITC litigation has a target date of September 22, 2021, the Institution
Decision in this proceeding will likely precede the Initial Determination at
the ITC, which is projected to issue on May 24, 2021.”). We agree with
Patent Owner that Petitioner’s measure for assessing this factor is
inappropriate. See Prelim. Resp. 10 (“Petitioner’s argument is irrelevant”);
see, e.g., Philip Morris Prods., S.A. v. RAI Strategic Holdings, Inc.,
IPR2020-00919, Paper 9 at 9 (PTAB Nov. 16, 2020) (Fintiv factor 2 weighs
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in favor of exercising discretion to deny institution where “the ITC is likely
to reach a final determination ahead of the date of our final written
decision”); Canadian Solar Inc. v. The Solaria Corp., IPR2021-00095,
Paper 12 at 9–10 (PTAB May 26, 2021) (evaluating Fintiv factor 2 by
comparing anticipated date of ITC final determination with anticipated date
of Board’s final written decision).
Because the projected target date for the Final Determination in the
related ITC Investigation is some eight or nine months ahead of the statutory
deadline for a final written decision in this proceeding, we determine that
this factor weighs heavily in favor of exercising discretion to deny institution
of an inter partes review.

3. Investment in Parallel Proceeding
“[I]f, at the time of the institution decision, the district court has
issued substantive orders related to the patent at issue in the petition, this
fact favors denial” of the Petition. Fintiv at 9–10. According to Patent
Owner, “the parties and the ITC have already invested (and will continue to
invest) enormous effort.” Prelim. Resp. 11. This is because “[t]he parties in
the ITC Investigation already concluded fact and expert discovery, as well as
pre-trial disclosures, briefing, and the hearing.” Id. According to Patent
Owner, by July 9, 2021, post-hearing briefing will be completed and the ITC
Initial Determination issued such that “little will be left to be done in the
ITC Investigation” at the time of this Decision. Id.
The investment in the related ITC Investigation by the parties is thus
clearly substantial. In some instances, the weight of such substantial
investment on this factor may be mitigated where “the petitioner filed the
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petition expeditiously, such as promptly after becoming aware of the claims
being asserted.” Fintiv at 11. This is because “it is often reasonable for a
petitioner to wait to file its petition until it learns which claims are being
asserted against it in the parallel proceeding.” Id. In this instance, Petitioner
contends that “[t]he Petition here was filed promptly after each party filed its
expert reports in the ITC investigation,” and that “[i]t is there that the parties
finally indicate the substantive issues it will ask the ALJ to resolve.”
Reply 1.
We again disagree with the measure Petitioner applies in addressing
this factor. That is, we do not agree that Fintiv can fairly be understood to
mitigate the impact of substantial investment in the parallel proceeding
based on the filing of the Petition after a party receives expert reports, rather
than—as Fintiv expressly states—at the time the party learns “which claims
are being asserted against it in the parallel proceeding.” See Fintiv at 11.
We instead agree with Patent Owner that “waiting until after the filing of
expert reports does not excuse Petitioner’s eight-month delay” in filing its
Petition. Sur-reply 2. As Patent Owner asserts, “Petitioner’s invalidity
theories were developed well before expert reports, as it served its initial
validity contentions, notice of prior art, and final invalidity contentions,
months before.” Id.
Accordingly, we do not find that Petitioner filed its Petition
expeditiously, and thus do not find the timing of the Petition’s filing to
mitigate the substantial investment by the parties in the related ITC
Investigation. We consequently determine that this factor weighs heavily in
favor of exercising discretion to deny institution of an inter partes review.

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4. Overlap of Issues
“[I]f the petition includes the same or substantially the same claims,
grounds, arguments, and evidence as presented in the parallel proceeding,
this fact has favored denial.” Fintiv at 12. In addressing this factor, Patent
Owner argues that Petitioner’s obviousness ground in this proceeding
overlaps the related ITC Investigation because “Petitioner relied on
combinations of Chardon with both Mishra and HDMI Specification 1.3(a)
in the ITC Investigation.” Prelim. Resp. 14. Patent Owner asserts, and
Petitioner does not dispute, that “[t]hese combinations and prior art
references were carried through expert reports and pre-trial briefing, and
were substantively addressed at the hearing.” Id.
Instead, Petitioner focuses on its anticipation ground over Barnett and
the dropping of several dependent claims from the related ITC Investigation
to argue that “there are significant substantive differences between the issues
raised [in the Petition] and the issues that will be decided in the ITC
litigation.” Pet. 77; see Reply 3. With respect to this anticipation ground,
though, Petitioner previously asserted a similar anticipation ground based on
Barnett in the related ITC Investigation before dropping it. Ex. 2002 (claim
charts identified by Patent Owner as Exhibit E2 to Petitioner’s Responses to
Patent Owner’s third set of interrogatories in the related ITC Investigation);
see also Reply 2 (Petitioner acknowledging its “decision to drop Barnett
from the ITC proceeding”).
The parties debate in their briefs the impact of including the
anticipation ground for only a portion of the related ITC Investigation,
respectively highlighting the degree to which that ground was or was not
substantively considered. See Prelim. Resp. 15 (Patent Owner stating that
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“Petitioner asserted Barnett in the ITC Investigation in its Final Invalidity
Contentions. Barnett was therefore substantively addressed throughout most
of the ITC Investigation.”); Reply 1–2 (Petitioner stating that “Barnett was
not included in any expert report, nor in any pre-trial briefing. Barnett was
not addressed at the hearing, and the ALJ will not consider or decide any
invalidity issue based on Barnett.”). Petitioner additionally analogizes the
situation to Philip Morris Products, S.A. v. RAI Strategic Holdings, Inc.,
IPR2020-01602, Paper 9 (PTAB April 2, 2021), arguing that in Philip
Morris, “similar efforts” mitigated to some degree concerns of duplicative
efforts between the ITC and the Board. Reply 2.
We agree with Patent Owner that there is significant overlap between
the Petition and the related ITC Investigation. Chardon, HDMI 1.3(a), and
Mishra are asserted in both proceedings, and Petitioner does not dispute that
there are many similarities between the theories in both proceedings. See
Prelim. Resp. 14–15; Reply 1–3. The fact that Petitioner asserts Barnett in
the Petition but is apparently no longer asserting Barnett in the related ITC
proceeding does not sufficiently detract from the overlap between the
proceedings.
Philip Morris also does not support Petitioner’s position here. In
Philip Morris, Petitioner dropped all of the claims challenged in the IPR
from the ITC case. Philip Morris, Paper 9 at 12. Thus, the ITC proceeding
at issue in Philip Morris involved invalidity grounds asserted against
different claims based on different prior art. Id. at 13. Here, by contrast, the
Petition and the related ITC proceeding involve overlapping claims and
overlapping prior-art references.
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Finally, we are not persuaded by Petitioner’s argument that the ITC
does not have the authority to invalidate a patent in a way that is applicable
to other forums. See Pet. 78. Fintiv expressly addresses ITC investigations,
explaining that “even though the Office and the district court would not be
bound by the ITC’s decision, an earlier ITC trial date may favor exercising
authority to deny institution under NHK if the ITC is going to decide the
same or substantially similar issues to those presented in the petition.”
Fintiv at 8.
Consequently, on the record before us, we determine that this factor
weighs in favor of exercising discretion to deny institution of an inter partes
review.

5. Overlap of Parties
All parties to this proceeding are included in the related ITC
Investigation. Accordingly, this factor weighs in favor of exercising our
discretion to deny institution. Fintiv at 13–14.

6. Other Circumstances
The final factor is a catch-all that takes into account any other relevant
circumstances. In addressing this factor, Petitioner contends that Patent
Owner raises, “only via attorney argument, heavily disputed factual issues
regarding the prior art disclosure as applied to the challenged claims.”
Reply 3. In contrast, Patent Owner contends that “Petitioner’s invalidity
arguments in the Petition are weak and lack merit, and, in any event, the ITC
will address the merits of Petitioner’s arguments well in advance of any final
determination by the Board.” Prelim. Resp. 17. We have reviewed
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Petitioner’s unpatentability arguments and, based on the limited record
before us, we do not find that the merits outweigh the other Fintiv factors
favoring exercising our discretion to deny institution.

7. Conclusion
As noted in Fintiv, we consider the above factors as part of “a holistic
view of whether efficiency and integrity of the system are best served by
denying or instituting review.” Fintiv at 6. Taken together, the late stage of
the related ITC Investigation, the significant difference between the
projected target date for the ITC’s final determination and our projected final
written decision in this proceeding, the overlap between the Petition and the
related ITC Investigation, and the fact that a stay of the related ITC
Investigation is unlikely, indicate that exercising our discretion to deny
institution of an inter partes review is appropriate.

III. ORDER
In consideration of the foregoing, it is
ORDERED that the Petition is denied and no trial is instituted.

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PETITIONER:

Jon E. Wright
Lestin L. Kenton
Ali Allawi
Daniel S. Block
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jwright-PTAB@sternekessler.com
lkentonPTAB@sternekessler.com
aallawi-PTAB@sternekessler.com
dblock-PTAB@sternekessler.com

PATENT OWNER:

S. Benjamin Pleune
Stephen R. Lareau
Nicholas T. Tsui
Michael C. Deane
ALSTON & BIRD LLP
ben.pleune@alston.com
stephen.lareau@alston.com
nick.tsui@alston.com
michael.deane@alston.com