Universal Electronics, Inc.

Patent Trials and Appeals Board

Apr 13, 2021

IPR2019-01614 (P.T.A.B. Apr. 13, 2021)

Trials@uspto.gov Paper 31
571-272-7822 Entered: April 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ROKU, INC.,
Petitioner,

v.

UNIVERSAL ELECTRONICS, INC.,
Patent Owner.
____________

IPR2019-01614
Patent 9,911,325 B2
_____________

Before PATRICK M. BOUCHER, MINN CHUNG, and
SHARON FENICK, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
In this inter partes review (“IPR”), instituted pursuant to 35 U.S.C.
§ 314, Roku, Inc. (“Petitioner”) challenges the patentability of claims 1–5
and 7 (the “challenged claims”) of U.S. Patent No. 9,911,325 B2 (Ex. 1001,
“the ’325 patent”), owned by Universal Electronics, Inc. (“Patent Owner”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and
37 C.F.R. § 42.73. For the reasons discussed below, we determine Petitioner
has shown by a preponderance of the evidence that claims 1–5 of the ’325
patent are unpatentable, but has not proven by a preponderance of the
evidence that claim 7 of the ’325 patent is unpatentable.
II. BACKGROUND
A. Procedural History
On September 18, 2019, Petitioner filed a Petition (Paper 2, “Pet.”)
requesting inter partes review of the challenged claims of the ’325 patent.
Patent Owner filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
On April 16, 2020, applying the standard set forth in 35 U.S.C.
§ 314(a), which requires demonstration of a reasonable likelihood that
Petitioner would prevail with respect to at least one challenged claim, we
instituted an inter partes review of all challenged claims of the ’325 patent
based on all grounds presented in the Petition. Paper 7 (“Inst. Dec.”), 36.
After institution, Patent Owner filed a Patent Owner Response (Paper
15, “PO Resp.”), Petitioner filed a Reply to the Patent Owner Response
(Paper 19, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 22, “PO
Sur-reply”). An oral hearing was held on December 22, 2020, and a copy of
the hearing transcript has been entered into the record. Paper 30 (“Tr.”).
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B. 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
’325 patent. Pet. 56; Paper 3, 2.
The ’325 patent is one of several patents owned by Patent Owner that
are challenged by Petitioner in various petitions for inter partes review,
including in IPR2019-01595, IPR2019-01608, IPR2019-01612, IPR2019-
01613, IPR2019-01615, IPR2019-01619, IPR2019-01620, and IPR2019-
01621. Pet. 57; Paper 3, 2. The parties also note that the ’325 patent claims
the benefit of the filing date of the following patent applications: U.S.
Patent Application No. 13/068,820, filed May 21, 2011 (now U.S. Patent
No. 9,355,553 (“the ’553 patent”)); U.S. Patent Application No. 12/462,526,
filed August 4, 2009 (now U.S. Patent No. 8,004,389 (“the ’389 patent”));
U.S. Patent Application No. 10/737,029, filed December 16, 2003 (now U.S.
Patent No. 7,589,642 (“the ’642 patent”)). Pet. 57; Paper 3, 2–3.
In addition, the ’642 patent was the subject of IPR2014-01082 (“the
earlier IPR”), in which institution of trial was denied. See Ex. 2007, 369–
379; PO Resp. 9. In the earlier IPR, independent claim 2 of the ’642 patent
was challenged based on anticipation and single-reference obviousness by
six different references. Ex. 2007, 372–373. In considering those earlier
challenges, the Board found dispositive Patent Owner’s argument that none
of the six references discloses “modulating [a] key code onto a carrier signal,
thereby generating a key code signal” recited in claim 2. Id. at 373.
The shortcomings identified by the Board for each of the six
anticipation challenges in the earlier IPR was the petitioner’s reliance on an
inherency argument, namely that each of the asserted references inherently
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discloses modulating a key code onto a carrier signal by virtue of its
disclosure of transmission of key code signals. Id. at 373–376. Specifically,
the Board rejected conclusory testimony proffered by the petitioner as
lacking sufficient support for “broad statements that transmission of codes
requires modulation onto a carrier signal.” See id. at 376. The single-
reference obviousness challenges suffered from a related deficiency, namely
that the petitioner “appear[ed] to conflate obviousness with inherent
anticipation and fail[ed] to provide a sufficient obviousness analysis.” Id. at
376–377.
C. The ’325 Patent
1. Overview
The ’325 patent “relates generally to remote control devices and, more
specifically, to relaying key code signals through a remote control device to
operate an electronic consumer device.” Ex. 1001, 1:18–21. Each of such
key code signals “corresponds to a function of the selected electronic device,
such as power on, power off, volume up, volume down, play, stop, select,
channel up, channel down, etc.” Id. at 1:36–41. A set of key codes
associated with a particular electronic device is referred to as a “codeset.”
Id. at 1:36–38. The number of key code signals may be large, particularly
when a single remote-control device is used to control multiple electronic
devices. Id. at 1:54–62. Accordingly, the inventor of the ’352 patent sought
a system “for enabling a remote control device to control a selected one of
multiple different electronic consumer devices without requiring the codeset
associated with the selected electronic consumer device to be stored on the
remote control device.” Id. at 1:66–2:3.
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Figure 1 of the ’352 patent is reproduced below.

Figure 1 illustrates a system for relaying a key code through a remote control
device to an electronic consumer device. Id. at 3:19–21.
As depicted in Figure 1, system 10 includes remote control device 11,
key code generator device 12 (shown as a set-top box), first electronic
consumer device 13 (shown as a video cassette recorder (“VCR”)), and
second electronic consumer device 14 (shown as a television set). Id. at
3:23–27, 3:37–40, 3:47–48. With remote control device 11, a user responds
to on-screen displays 15 of television set 14, generated by key code
generator device 12, “to step through a sequence of menu screens to identify
the codeset corresponding to the device that is to be controlled.” Id. at 3:31–
35, 3:47–53. For example, system 10 may, in this way, identify the
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appropriate codeset to enable remote control device 11 to communicate with
VCR 13 and television set 14. Id. at 3:47–55.
The ’325 patent explains that, in some instances, key code generator
device 12 is capable of communicating with remotely maintained database
of codesets 39 over network 38, which may be the Internet. Id. at 8:60–63.
A new codeset, such as may be associated with a new electronic consumer
device introduced into the market, may thus be distributed from database 39
via network 38 and stored on a mass-storage hard disk within key code
generator device 12. Id. at 8:64–9:5.
After generating a key code, key code generator device 12 modulates
the key code onto a carrier signal, such as an RF signal, to generate “first
key code signal 19.” Id. at 4:56–59.
Figure 5 of the ’352 patent is reproduced below.

Figure 5 illustrates a twelve-bit key code modulated onto first key code
signal 19 using pulse-width modulation. Id. at 5:21–23.
Remote control device 11 receives first key code signal 19 on an RF
transmission from key code generator device 12, and relays the key code to
the appropriate electronic consumer device, such as VCR 13, in the form of
second key code signal 22. Id. at 5:59–66. The electronic consumer device
receives second key code signal 22, recovers the key code, and, if the key
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code is correct for the device, performs the function desired by the user. Id.
at 6:20–25.
In an alternative embodiment, the electronic consumer device is
controlled by an RF key code signal transmitted directly from key code
generator device 12. Id. at 6:31–33. In this embodiment, the electronic
consumer device, e.g., television set 14, has an RF receiver and is capable of
receiving RF key code signals. Id. at 6:58–59. When the user presses a key
on remote control device 11 associated with a desired function of television
set 14, a corresponding RF keystroke indicator signal is transmitted to key
code generator device 12. Id. at 6:40–47. Key code generator device 12
then determines the appropriate key code that corresponds to the pressed
key, generates third key code signal 25 by modulating the key code onto an
RF carrier signal, and transmits third key code signal 25 directly to
television set 14. Id. at 6:48–61. Third key code signal 25 is generated
using the same modulation technique used for generation of first key code
signal 19 described above. Id. at 6:52–54. Upon receiving third key code
signal 25, television set 14 recovers the key code from the received signal
and performs the function desired by the user. Id. at 6:61–65.
2. Illustrative Claim
Independent claim 1 is illustrative of the challenged claims and is
reproduced below with bracketing used by Petitioner.
1. A first device for transmitting a command to control a
functional operation of a second device, the first device comprising:
[1.1] a receiver;
[1.2] a transmitter;
[1.3] a processing device coupled to the receiver and the
transmitter; and
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[1.4] a memory storing instructions executable by the processing
device, the instructions causing the processing device to:
[1.4.1] generate a key code using a keystroke indicator received
from a third device in communication with first device via use
of the receiver, the keystroke indicator having data that
indicates an input element of the third device that has been
activated;
[1.4.2] format the key code for transmission to the second device;
and
[1.4.3] transmit the formatted key code to the second device in a
key code signal via use of the transmitter;
[1.4.4] wherein the generated key code comprises a one of a
plurality of key code data stored in a codeset, wherein the one
of the plurality of key code data is selected from the codeset
as a function of the keystroke indicator received from the third
device, wherein each of the plurality of key code data stored
in the codeset comprises a series of digital ones and/or digital
zeros, and
[1.4.5] wherein the codeset further comprises time information
that describes how a digital one and/or a digital zero within
the selected one of the plurality of key code data is to be
represented in the key code signal to be transmitted to the
second device.
Ex. 1001, 10:42–11:5.
3. Prosecution History
The ’325 patent issued from U.S. Patent Application No. 15/153,905,
filed May 13, 2016 (“the ’905 application”). Ex. 1001, codes (21), (22).
The ’905 application is a continuation of U.S. Patent Application
No. 13/068,820 (issued as the ’553 patent), which is a continuation of U.S.
Patent Application No. 12/462,526 (issued as the ’389 patent), which, in
turn, is a continuation of U.S. Patent Application No. 10/737,029 (issued as
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the ’642 patent). Id. at code (63), 1:7–14. In what follows, we provide a
summary of the prosecution histories of the ’642 patent and the ’325 patent.
a. Prosecution History of the ’642 Patent
The application that matured into the ’642 patent was filed with a
single independent method claim:
1. A method comprising:
(a) receiving a keystroke indicator signal from a remote
control device;
(b) generating a key code within a key code generator
device;
(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.

Ex. 2007, 25. In a first, nonfinal Office Action, the Examiner rejected this
claim for obviousness over the combination of U.S. Patent No. 5,963,624
(“Pope”) and U.S. Patent No. 5,595,342 (“McNair”). Id. at 47. According
to the Examiner, Pope teaches both the “receiving” and “generating”
limitations of this original claim, but “is silent on teaching modulating the
key code onto a carrier signal.” Id. Nevertheless, the Examiner found that
McNair teaches that “the control signal is modulated and transmitted to the
controlled apparatus as a conventional practice.” Id. In light of this
teaching, the Examiner concluded that “[i]t would have been obvious to one
of ordinary skill in the art to modulate the key code onto a carrier signal in
Pope because modulation of the key code enables the key code signal to be
transmitted wirelessly to the appliances and this also represents a
conventional practice.” Id.
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In traversing this rejection, the Applicant argued that “Pope does not
receive a keystroke indicator and then generate a key code” because the
“appliance control codes are not generated within the base unit 12 of Pope.
Instead, the appliance control codes are transmitted from the handset 10/50
to the base unit 12, where they are translated into control signals.” Id. at 72.
The Examiner considered this argument, but found it unpersuasive in a final
Office Action, reiterating that “Pope teaches receiving a keystroke indicator
signal which contains an indication of a key on the remote control device 10
that was pressed[, and] generating a key code (codes for communicating the
control function to the appliances) within the code generator 12.” Id. at 88.
After a further traversal and rejection of original independent claim 1,
the Applicant appealed the decision to our predecessor, the Board of Patent
Appeals and Interferences (“BPAI”). Id. at 116–119, 132–133, 134, 219–
256. The BPAI reversed the Examiner with respect to the rejection of
original claim 1, agreeing with the Applicant that “McNair does not describe
modulating a key code, or any code, onto a carrier signal.” Id. at 308.
Instead, the BPAI found that “McNair merely describes frequency
modulation including frequency shift keying modulation.” Id. Concurrent
with that finding, the BPAI also issued a new ground of rejection over Pope
and U.S. Patent No. 4,005,428 (“Graham”):
Although Pope does not describe modulating the keycode onto a
carrier signal, attention is directed to Graham which describes
modulating a digital code or binary code onto a carrier signal. . . .
Graham describes that doing so offers the advantages of
precluding unauthorized or accidental activation of a control
associated with the receiving means and provides an exceptional
degree of security and privacy. . . . It would have been obvious
to one with ordinary skill in the art at the time the invention was
made to modify the method of Pope to include modulating the
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key code onto a carrier signal since doing so offers the
advantages of precluding unauthorized or accidental activation
and provides an exceptional degree of security and privacy.

Id. at 310–311.
Subsequent to the BPAI’s appeal decision, the Applicant amended the
“receiving” limitation of original claim 1 to recite that “the keystroke
indicator signal indicates a key on said remote control device that a user has
selected,” and amended the “generating” limitation to recite “using the
keystroke indicator signal.” Id. at 315. In doing so, the Applicant
characterized the BPAI’s decision as based “on a broad interpretation of the
claim term ‘keystroke indicator signal’” that rejected the narrower
interpretation of “an indication of a selected key while precluding a control
code,” for which the Applicant had advocated. Id. at 323. The Applicant
thus stated that it “overcomes the new rejection by amending claim 1
explicitly to limit the scope of the term ‘keystroke indicator signal’ to
indicate a key on a remote control device that a user has selected.” Id.
The Examiner maintained the rejection because “[i]t would have been
obvious to one with ordinary skill in the art at the time the invention was
made to modify the method of Pope to include modulating the key code onto
a carrier signal.” Id. at 328. But the Examiner also indicated at the same
time that dependent claims reciting transmission of the key code signal “to
said remote control device” or “to an electronic consumer device” were
allowable but for their dependence from a rejected base claim. Id. at 328.
The Applicant accordingly canceled claim 1 and presented those dependent
claims in independent form, leading to allowance of those claims as issued
independent claims 1 and 2 of the ’642 patent. Id. at 333, 344–347.
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b. Prosecution History of the ’325 Patent
The ’905 application was filed with original claim 1, which is
reproduced below.
1. A first device for transmitting a command to control a
functional operation of a second device, the first device
comprising:
a receiver;
a transmitter;
a processing device coupled to the receiver and the
transmitter; and
a memory storing instructions executable by the
processing device, the instructions causing the processing device
to:
generate a key code using a keystroke indicator received
from a third device in communication with first device via use of
the receiver, the keystroke indicator having data that indicates an
input element of the third device that has been activated;
format the key code for transmission to the second device;
and
transmit the formatted key code to the second device in a
key code signal via use of the transmitter;
wherein the generated key code is a part of a codeset and
wherein the codeset comprises time information that describes a
digital one and a digital zero.
Ex. 1002, 30. In a first, nonfinal Office Action, the Examiner rejected this
claim for obviousness over the combination of Pope and U.S. Patent
No. 4,242,664 (“Lindstedt”). Id. at 70. According to the Examiner, Pope’s
base unit teaches “a first device for transmitting a command to control a
functional operation of a second device,” where the first device receives a
keystroke indicator signal from a handset (or a phone), i.e., a third device,
generates a key code from the keystroke indicator signal, formats the key
code for transmission to the second device, and transmits the formatted key
code to the second device. Id. at 70–71.
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In response to the rejection, the Applicant amended the “wherein the
generated key code” clause of claim 1 as follows:
wherein the generated key code is a part of comprises a
one of a plurality of key code data stored in a codeset, wherein
the one of the plurality of key code data is selected from the
codeset as a function of the keystroke indicator received from the
third device, wherein each of the plurality of key code data stored
in the codeset comprises a series of digital ones and/or digital
zeros, and wherein the codeset further comprises time
information that describes how a digital one and/or a digital zero
within the selected one of the plurality of key code data is to be
represented in the key code signal to be transmitted to the second
device.
Id. at 81. Based on this amendment, the Applicant argued
Pope does not disclose, teach, or suggest generating a key code
using a keystroke indicator received from a third device in
communication with first device via use of the receiver, the
keystroke indicator having data that indicates an input element
of the third device that has been activated, wherein the generated
key code comprises a one of a plurality of key code data stored
in a codeset, wherein the one of the plurality of key code data is
selected from the codeset as a function of the keystroke indicator
received from the third device, wherein each of the plurality of
key code data stored in the codeset comprises a series of digital
ones and/or digital zeros, and wherein the codeset further
comprises time information that describes how a digital one
and/or a digital zero within the selected one of the plurality of
key code data is to be represented in the key code signal to be
transmitted to the second device as claimed.
Id. at 85 (emphasis added). The Applicant further asserted “rather than
disclose generating a key code in this manner, Pope discloses a system in
which the handset includes a memory in which is stored appliance control
codes.” Id. (emphasis added). According to the Applicant, in Pope,
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When a user activates a key of the keypad of the handset, the
handset transmits a complete appliance control code (as opposed
to a keystroke indicator) to the base station, and the base station
then functions to simply transfer the received appliance control
code to an appliance via use of an infrared signal . . . .
Id. The Applicant argued that “Pope does not disclose, teach, or suggest the
method for generating a key code as now claimed.” Id. at 86 (emphasis
added).
The Examiner allowed the claims without further comment. Id. at 96.
D. Evidence
1. Applied References
Petitioner relies upon the following references in its challenges to
patentability.
Reference Date Designation Exhibit No.
U.S. Patent Application Pub.
No. 2004/0080428 A1
Filed
Oct. 25, 2002 Rye
1 1005
U.S. Patent No. 4,426,662 Issued Jan. 17, 1984 Skerlos 1006
U.S. Patent No. 7,562,128 B1 Filed Sept. 1, 2000 Caris 1007
U.S. Patent No. 8,132,105 B1 Filed Oct. 10, 2000 Dubil 1008

1 For clarity and ease of reference, we only list the first named inventor.
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2. Testimonial Evidence
Petitioner relies on two Declarations from Dr. Samuel H. Russ in
support of its Petition and Reply. Ex. 1003 (“Russ Declaration”); Ex. 1030
(“Russ Reply Declaration”). Patent Owner cross-examined Dr. Russ by
deposition. Ex. 2010 (“Russ Dep.”).
In support of its Patent Owner Response, Patent Owner relies on the
Declaration of Dr. Michael D. Sprenger. Ex. 2003 (“Sprenger Declaration”).
Petitioner cross-examined Dr. Sprenger by deposition. Ex. 1033 (“Sprenger
Dep.”).
E. Instituted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability (Pet. 2–3):
Claims Challenged 35 U.S.C. § References/Basis
1–5 103(a)2 Caris, Dubil
1, 2, 3, 5, 7 103(a) Rye, Skerlos

We instituted an inter partes review of all challenged claims on all grounds
presented in the Petition. Inst. Dec. 36.
III. ANALYSIS
A. Relevant Principles of Law
To prevail in challenging Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
’325 patent has an effective filing date prior to the effective date of the
applicable AIA amendment, we refer to the pre-AIA version of § 103.
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unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
review], the petitioner has the burden from the onset to show with
particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
§ 312(a)(3) (requiring inter partes review petitions to identify “with
particularity . . . the evidence that supports the grounds for the challenge to
each claim”)). This burden never shifts to Patent Owner. See Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which the subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated

3 The parties do not address secondary considerations, which therefore do
not constitute part of our analysis.
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reasoning with some rational underpinning to support the legal conclusion of
obviousness”)); see Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
F.3d 1342, 1366–67 (Fed. Cir. 2012) (holding that “some kind of motivation
must be shown from some source, so that the [trier of fact] can understand
why a person of ordinary skill would have thought of either combining two
or more references or modifying one to achieve the patented [invention]”)).
Petitioner cannot satisfy its burden of proving obviousness by employing
“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016).
We analyze Petitioner’s asserted grounds based on obviousness with
the principles identified above in mind.
B. Level of Ordinary Skill in the Art
We begin our analysis by addressing the level of ordinary skill in the
art. Citing the testimony of Dr. Russ as support, Petitioner proposes that a
person of ordinary skill in the art at time of the priority date of the ’325
patent “would have a bachelor’s degree in electrical engineering or
equivalent degree with two years of work experience relating to
communications and consumer electronics.” Pet. 8 (citing Ex. 1003 ¶¶ 15–
18). Patent Owner proposes instead that a person of ordinary skill in the art
“would have had a bachelor’s degree which involved computer
programming coursework, for example, electrical engineering, computer
engineering, computer science, cognitive science, mechanical engineering,
industrial engineering, or a similar degree, and at least one year of work
experience in software programming, user interfaces, or human factors.” PO
Resp. 10. According to Patent Owner, “[a]dditional education might
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substitute for some of the experience, and substantial experience might
substitute for some of the educational background.” Id.
We adopt Petitioner’s articulation. Although Patent Owner’s
declarant, Dr. Sprenger, believes Patent Owner’s statement “is more
appropriately tailored to the subject matter area of the ’325 patent,” he also
concedes that “the differences between the proposed definitions of a [person
of ordinary skill in the art] by Petitioner and Patent Owner are relatively
minor” such that those differences “do not affect any of [his] analysis.”
Ex. 2003 ¶¶ 37, 40. Likewise, our analysis and conclusions in this Final
Written Decision would be the same regardless of whether Petitioner’s or
Patent Owner’s definition of the level of ordinary skill in the art is adopted.
C. Claim Construction
In an inter partes review, we apply the same claim construction
standard that would be used in a civil action under 35 U.S.C. § 282(b),
following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc). See Changes to the Claim Construction Standard
for Interpreting Claims in Trial Proceedings Before the Patent Trial and
Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
37 C.F.R. § 42.100(b) (2019)). In applying such standard, claim terms are
generally given their ordinary and customary 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. Phillips, 415
F.3d at 1312–13. “In determining the meaning of the disputed claim
limitation, we look principally to the intrinsic evidence of record, examining
the claim language itself, the written description, and the prosecution
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history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
1312–17).
The parties discuss claim constructions for four claim terms recited in
claim 1—“key code,” “key code signal,” “keystroke indicator,” and
“generate a key code using a keystroke indicator.” Pet. 8–9; PO Resp. 11–
15; Pet. Reply 2–5; PO Sur-reply 2–3. We address constructions for each of
these terms below.
1. “key code”
The parties agree that the term “key code” recited in challenged
independent claim 1 should be construed as “a code corresponding to the
function of an electronic device, optionally including timing information.”
Pet. 9; PO Resp. 11. This construction was adopted by the district court in
the related litigation. Ex. 1009, 12. The district court’s construction is
consistent with the ordinary and customary meaning of the phrase in light of
the Specification, and we adopt the proposed construction for this Final
Written Decision. See, e.g. Ex. 1001, 5:3–7.
2. “key code signal”
In the related litigation, the parties proposed different constructions of
the term “key code signal” recited in challenged independent claim 1.
Ex. 1009, 13. The district court provided a construction that differs from
both parties’ proposed constructions, namely “a signal containing a
modulated key code.” Id. at 13–23. In the Institution Decision, we adopted
as our preliminary construction the same construction adopted by the district
court in the related litigation because we found it consistent with the
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ordinary and customary meaning of the phrase in light of the Specification.
Ex. 1009, 13–23; Inst. Dec. 11.
Although Patent Owner states that it agrees with this construction, it
“clarifies” that the term “key code signal” “excludes a codeset from the
same signal.” PO Resp. 13. According to Patent Owner, not only is such an
exclusion consistent with the claim language and Specification of the ’352
patent, there was an “express disclaimer during prosecution” that further
supports the proposed exclusion. Id. at 13–14. We are not persuaded by
either Patent Owner’s plain-meaning or prosecution-disclaimer arguments to
incorporate its proposed exclusion into the construction of “key code
signal.” Rather, we agree with Petitioner that the proposed exclusion
improperly adds unsupported limitations to the construction. See Pet. Reply
3.
First, Patent Owner contends that “key code is singular and distinct
from a codeset in the specification,” citing language from the Specification
of the ’352 patent. PO Resp. 13 (citing Ex. 1001, 2:44–45 (“When the key
code from one of the codesets . . .”), 4:45 (“which key code of the codeset
previously identified . . .”)). The cited passages, however, plainly describe a
key code as part of a codeset. It is thus apparent from the cited passages that
a signal carrying a codeset may also be a signal carrying a key code.
Therefore, Patent Owner provides insufficient reasoning based on the
Specification passages it cites to support the exclusion of a codeset. See,
e.g., Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015)
(quoting Santuarus, Inc. v. Par Pharm., 694 F.3d 1344, 1351 (Fed. Cir.
2012) (“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”).
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Second, Patent Owner directs our attention to the Applicant’s
statements made during prosecution of the predecessor application leading to
the ’642 patent to the effect that “Claim 2 recites transmitting a key code
signal to the remote control device and does not recite transmitting a codeset
to the remote control device.” PO Resp. 13–14 (quoting Ex. 2007, 75–76
(emphasis by Patent Owner); citing Ex. 2007, 241–242, 121). But the
Federal Circuit has made clear that the standard for disavowal of full claim
scope through prosecution history disclaimer is “exacting, requiring clear
and unequivocal evidence that the claimed invention includes or does not
include a particular feature.” Poly-America, L.P. v. API Industries, Inc., 839
F.3d 1131, 1136 (Fed. Cir. 2016) (citations omitted). “Ambiguous language
cannot support disavowal.” Id. (citations omitted). The Applicant’s
statements during prosecution do nothing more than reflect the language
recited in the claim. They do not provide “clear and unequivocal evidence”
of a disavowal by the Applicant of codeset from the signal.
Third, Patent Owner contends that the claim language itself supports
its proposed exclusion. PO Resp. 13 (citing Ex. 1001, 10:61–62; Ex. 2008,
57:2–17). But we do not discern any such exclusion from the language
Patent Owner highlights, namely “wherein the generated key code comprises
a one of a plurality of key code data stored in a codeset.” Ex. 1001, 10:61–
62. Similar to our discussion of the Specification above, a signal carrying a
codeset may also be a signal carrying a key code and nothing in the plain
language of the claim says otherwise.
We accordingly construe “key code signal” as “a signal containing a
modulated key code,” without the Patent-Owner-proposed exclusion of a
codeset from the same signal.
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3. “keystroke indicator”
The parties nominally agree that the term “keystroke indicator”
recited in claim 1 should be construed as “a signal, distinct from a key code,
corresponding to a pressed key [on a remote control].” Pet. 9; PO Resp. 12.
(alteration in original). This agreed construction was adopted by the district
court in the related litigation. Ex. 1009, 12–13.
Nevertheless, Patent Owner “clarifies” that its agreement with this
construction “means that the keystroke indicator signal cannot contain the
claimed key code.” PO Resp. 12. Patent Owner contends that such an
exclusion is not only “consistent with the plain and ordinary meaning of
‘distinct from a key code,’ as well as how the term is used in the
specification,” but also consistent with an express disclaimer made during
prosecution of the application for the ’642 patent. Id. at 12–13 (citing
Ex. 1001, 8:26–31; Ex. 2007, 323). In addition, Patent Owner observes that
“the claims require ‘using the keystroke indicator’ to ‘generate a key code,’
so the keystroke indicator cannot already include the key code or there
would be no reason to generate it.” Id. at 13 (citing Ex. 1001, 10:52).
Petitioner does not dispute this clarification, which we find consistent
both with the distinction embraced by the differences between a “key code”
and a “keystroke indicator,” and with the distinction between those terms as
recited in the challenged claims. Accordingly, we adopt the parties agreed
construction, with Patent Owner’s clarification.
4. “generate a key code using a keystroke indicator”
Challenged independent claim 1 recites “generate a key code using a
keystroke indicator.” Ex. 1001, 10:52. Patent Owner “proposes that this
term can generally be understood by its plain and ordinary meaning, except
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that it excludes receiving an appliance control code and merely translating or
converting the code into another format, such as an infrared signal.” PO
Resp. 14. According to Patent Owner, “[d]uring prosecution, the Applicant
repeatedly distinguished generating a key code within a key code generator
device from receiving an appliance control code and merely translating or
converting the code into another format, such as an infrared signal, such that
the latter was expressly disclaimed from the scope of the claim term.” Id.
(citing PO Resp. § II.C (Prosecution History)).
We are not persuaded that Patent Owner’s argument satisfies the
“exacting” standard established by the Federal Circuit for prosecution
history disclaimer because the prosecution history lacks the “clear and
unequivocal evidence” necessary to support the proposed exclusion. See
Poly-America, 839 F.3d at 1136.
At best, Patent Owner directs our attention to amendments made in
response to rejections during prosecution of the applications for the ’325
patent and the ’642 patent. See PO Resp. 6–8. For example, Patent Owner
points to the amendments made to the “wherein” clause of original claim 1
during prosecution of the application for the ’325 patent and argues “in
distinguishing prior art, the Applicant differentiated the claimed invention
from references that merely disclose translating or converting a signal that
already includes the control code into another format, such as infrared.” Id.
at 6 (citing Ex. 1002, 85). As discussed above in Section II.C.3.b, however,
the Applicant remarks identified by Patent Owner relate to the “wherein”
clause limitation, which recites what “the generated key code” comprises.
See Ex. 1002, 81. Because there is nothing in the amended “wherein” clause
that indicates or suggests excluding from the recited “generated key code”
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translating or converting the received code, we find Patent Owner’s
inferences about limiting the scope of the “generate a key code” limitation
insufficiently supported by the prosecution record. As discussed in the same
section above, based on the amendments to the “wherein” clause, the
Applicant argued
Pope does not disclose, teach, or suggest generating a key code
using a keystroke indicator received from a third device in
communication with first device via use of the receiver, the
keystroke indicator having data that indicates an input element
of the third device that has been activated, wherein the generated
key code comprises a one of a plurality of key code data stored
in a codeset, wherein the one of the plurality of key code data is
selected from the codeset as a function of the keystroke indicator
received from the third device, wherein each of the plurality of
key code data stored in the codeset comprises a series of digital
ones and/or digital zeros, and wherein the codeset further
comprises time information that describes how a digital one
and/or a digital zero within the selected one of the plurality of
key code data is to be represented in the key code signal to be
transmitted to the second device as claimed.
Id. at 85 (emphasis added). The Applicant further asserted “rather than
disclose generating a key code in this manner, Pope discloses a system in
which the handset includes a memory in which is stored appliance control
codes.” Id. (emphasis added). According to the Applicant, in Pope,
When a user activates a key of the keypad of the handset, the
handset transmits a complete appliance control code (as opposed
to a keystroke indicator) to the base station, and the base station
then functions to simply transfer the received appliance control
code to an appliance via use of an infrared signal . . . .
Id. The Applicant argued that “Pope does not disclose, teach, or suggest the
method for generating a key code as now claimed.” Id. at 86 (emphasis
added). Thus, the Applicant remarks cited by Patent Owner simply reflect
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the language of the amended “wherein” clause of the claim and, therefore,
do not represent clear and unequivocal evidence of express disclaimer to
support Patent Owner’s proposed exclusion of translating or converting the
received code from the term “generate a key code using a keystroke
indicator received from a third device.” See Ex. 1002, 85–86.
Patent Owner also points to amendments that resulted from rejection,
by both the Examiner and the BPAI on appeal, during prosecution of the
application for the ’642 patent, as well as the Applicant’s distinction made
during prosecution between “generating” codes and a process of “receiving”
and “translating” codes, as taught by Pope. See PO Resp. 6–7; Ex. 2007,
73–74 (Applicant arguing that Pope’s base unit 12 “does not generate the
appliance control codes. Instead base unit 12 receives the appliance control
codes and then translates them into infrared control signals.”), 88 (Examiner
finding argument unpersuasive), 154–155 (Applicant repeating argument on
appeal to the BPAI), 3104 (BPAI finding that “Pope’s description that base
unit (i.e., key code generator) processor 84 gets an infrared control code
(i.e., key code) from memory 86 based on a received appliance control code
(key stroke indicator signal) meets the limitation of ‘generating a key code
within a key code generator device . . .’”). Patent Owner provides the
following explanation of subsequent amendments to the claims:
In response, the Applicant amended the claim at issue to
add “wherein the keystroke indicator signal indicates a key on

4 Patent Owner remarks that the Board’s disagreement with the Applicant’s
distinctions was “under the broadest reasonable interpretation, but that is no
longer the claim construction standard for IPRs.” PO Resp. 7 (citing
Ex. 2007, 311). We would conclude that Pope meets the “generating”
limitation also under the current claim-construction standard the Board
applies to inter partes reviews.
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said remote control device that a user has selected” and “using
the keystroke indicator signal,” stating that the purpose was
“explicitly to limit the scope of the term ‘keystroke indicator
signal’” to exclude the broader interpretation used by the Appeal
Board and Examiner and to narrow “the term ‘keystroke
indicator signal’ to mean an indication of a selected key while
precluding a control code” ([Ex. 2007,] 323).
Thus, during prosecution, the Applicant expressly
disclaimed from the scope of “keystroke indicator (signal)” and
“generate(s) a key code using the keystroke indicator (signal)” a
device that receives a control code and merely translates or
converts the code into another format, such as an infrared signal.
PO Resp. 7–8. We are not persuaded by this explanation. The Applicant
remarks identified by Patent Owner relate to the term “keystroke indicator
signal,” and we find Patent Owner’s inferences about limiting the scope of
the “generating” limitation insufficiently supported by the prosecution
record. Based on the complete record, we find that there was not an
unambiguous, clear, and unmistakable prosecution history disclaimer that
supports Patent Owner’s proposed exclusion of translation of a received
code from the scope of the term “generate a key code.”
Nor do we find Patent Owner’s proposed exclusion is supported by
other intrinsic evidence of record. We agree with Petitioner that Patent
Owner’s proposed exclusion in construing the “generate a key code”
limitation “improperly imports requirements far beyond the plain and
ordinary meaning of this term.” Pet. Reply 3 (citing Ex. 1030 ¶¶ 10–11). In
the related litigation, for example, the district court concluded (in the context
of considering its construction of “key code generator device”) that “any
challenge Roku has to the meaning of the term ‘generate,’ including a
suggestion that it could only be satisfied by creating a key code from
scratch, is rejected.” Ex. 1009, 29. Although Patent Owner asserts that it
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“does not seek to impose any such requirement,” Patent Owner nonetheless
seeks to draw a fine line with its proposed exclusion. See PO Resp. 14.
Turning to the Specification, Patent Owner contends that the proposed
exclusion is “consistent with how the terms are used in the specification.”
PO Resp. 14 (citing Ex. 1001, 5:63–6:19; Ex. 2003 ¶¶ 123–126); see PO
Sur-reply 3. In the cited paragraph of his Declaration, Dr. Sprenger states
that “[t]he ’325 patent specification confirms [the proposed exclusion] when
it uses the terms ‘translating’ and ‘converted’ when describing the remote
control receiving the key code in a first carrier signal and merely modulating
that key code onto a second carrier signal.” Ex. 2003 ¶ 126 (citing Ex. 1001,
5:63–6:19).
The cited portion of the Specification describes an embodiment where
a key code generator device transmits key code signal 19 to a remote control
device, which in turn translates it into key code signal 22 and then transmits
the translated key code signal to a VCR, a consumer electronic device.
Ex. 1001, 5:59–6:19 (describing steps 104 and 105 of the method for
relaying key code signals depicted in Figure 2). The Specification also
describes “a second example,” where a key code generator device, after
generating a key code signal, transmits it directly to an electronic consumer
device. See id. at 6:31–65. It is well established that “it is improper to read
limitations from a preferred embodiment described in the specification—
even if it is the only embodiment—into the claims absent a clear indication
in the intrinsic record that the patentee intended the claims to be so limited.”
Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir.
2014) (quoting Liebel-Flarsheim v. Medrad, Inc., 358 F.3d 898, 913 (Fed.
Cir. 2004). A disclaimer or disavowal of claim scope must be “clear and
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unmistakable, requiring ‘words or expressions of manifest exclusion or
restriction’ in the intrinsic record.” Unwired Planet, LLC v. Apple Inc., 829
F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). In view of the word
“example” used in the Specification, we determine that the particular
embodiment cited by Patent Owner does not rise to the level of a clear and
unmistakable disavowal to support the exclusion proposed by Patent Owner.
The Specification of the ’325 patent describes a user pressing a key on
a remote control device so that the remote control device transmits a
keystroke indicator signal to the key code generator device. Ex. 1001, 3:56–
4:3. Step 102 of key code generator device to “generate a key code
corresponding to the pressed key” is accomplished by “determin[ing] which
key code of the codeset previously identified . . . corresponds to the pressed
key.” Id. at 4:44–46, Fig. 2. Based on this disclosure of the ’325 patent,
Patent Owner takes the position that “identifying a key code from a codeset
is [‘]generating[’], but translating one is not [‘]generating[’].” Tr. 89:12–17
(Patent Owner agreeing such a characterization of its position is “exactly
right”).
We are not persuaded that there is sufficient basis for construing the
“generate a key code” limitation so broadly as to capture the identification of
a key code from a codeset while simultaneously excluding translation of a
received code. By forgoing a straightforward recitation of “identifying” in
the claims in favor of a broader recitation of “generate a key code,” the
patentee clearly meant for the term not to be limited to mere identification of
a key code but also to include other forms of generation of the key code.
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Patent Owner further argues that its proposed exclusion is “supported
by the fact that ‘format the key code for transmission’ is a separate limitation
in claim 1 from ‘generate a key code,’ and would be rendered superfluous if
‘generate a key code’ included simple formatting of the key code for
transmission.” PO Resp. 15 (citing Ex. 1001, 10:52–58). We disagree with
Patent Owner’s argument because the claim recites “format the key code,”
not “translate or convert the key code.” Patent Owner’s argument is not
supported by the claim language because Patent Owner does not explain
adequately why the limitation “format the key code” would be rendered
superfluous if the term “generate a key code” encompasses “translate or
convert a key code.”
We depart from the plain and ordinary meaning in only two instances:
(1) when a patentee acts as his own lexicographer and (2) when the patentee
disavows the full scope of the claim term in the specification or during
prosecution. Poly-Am., 839 F.3d at 1136 (citation omitted). Here, Patent
Owner does not argue lexicography. Because we find no disavowal in the
Specification or during prosecution that supports Patent Owner’s proposed
exclusion of translation of a received code from the scope of the term, we
apply the plain and ordinary meaning of “generate a key code” without such
an exclusion.
No other claim terms, beyond those terms discussed above, need to be
construed expressly for purposes of this Final Written Decision. See Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
(holding that only terms that are in controversy need to be construed, and
“only to the extent necessary to resolve the controversy”); see also Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
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(Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
review).
D. Scope and Content of the Prior Art
1. Rye (Ex. 1005)
Rye describes “a remote control system for use in controlling the
operation of a multi-brand audiovisual component system.” Ex. 1005 ¶ 12.
Figure 2 of Rye is reproduced below.

Figure 2 is a schematic diagram of remote control unit 10, which includes
key matrix 18, microprocessor 20, modulator-transmitter 22, and antenna 24.
Id. ¶ 22.
As described in Rye, microprocessor 20 stores a plurality of binary
control codes corresponding to various functions of the audiovisual
components to be controlled by operation of remote control unit 10. Id.
“The binary control codes stored in the microprocessor 20 are generic codes
in that they are not specific for any particular brand or model of audiovisual
product.” Id. In response to user operation of a push button on remote
control unit 10, key matrix 18 produces a memory address signal that is
applied to microprocessor 20. Id. The binary coded signal generated by
microprocessor 20 is applied to modulator-transmitter 22 for radio-
frequency modulation and transmission by antenna 24. Id.
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Figure 3 of Rye is reproduced below.

Figure 3 is a schematic diagram of addressable transceiver 30, which
receives binary coded signals transmitted by antenna 24 of Figure 2. Id. “In
overview, those signals are converted in transceiver 30 to corresponding
binary coded infrared (IR) signals, which are then transmitted over-the-air to
the selected audiovisual component to control its operation.” Id. ¶ 23.
As illustrated in the drawing, transceiver 30 includes RF antenna 32,
RF receiver 34, demodulator 36, main processor 38 (with memory 40),
infrared microprocessor 42 (with memories 44, 46), and infrared emitter 48.
Id. ¶¶ 23–25. Memory 40 stores addresses used by main processor 38 in
identifying particular audiovisual components to be controlled. Id. ¶¶ 23–
24. Memory 44 “contains the remote control codes for all brands . . . and
models of commercially available audiovisual components.” Id. ¶ 24.
Remote control codes stored in memory 46 “are derived from code library
memory 44 through the microprocessor 42 [and] may be periodically
supplemented or otherwise modified by the user when a new audiovisual
component is acquired or a currently owned component is discarded.” Id.
In operation, radio-frequency binary-coded control and address
signals transmitted by antenna 24 are received at antenna 32 and receiver 34,
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and demodulated by demodulator 36, such that main microprocessor 38
generates a signal applied to infrared microprocessor 42 after comparing the
address portion to product codes stored in memory 40. Id. ¶ 26. Infrared
processor 42 converts the control portion of the signal for compatibility with
the operating binary code of the audiovisual component whose remote-
control code is obtained from memory 46, and transmits that signal to the
audiovisual component. Id. ¶ 27.
2. Skerlos (Ex. 1006)
Skerlos “relates to remote control receivers and more specifically is
directed to an infrared (IR) remote control detector/decoder providing
improved noise immunity particularly adapted for use with a television
receiver.” Ex. 1006, 1:5–9. In particular, Skerlos describes a remote-control
system in which pulse code modulated (“PCM”) output signals are generated
in response to user-operated controls. Id. at 2:66–3:2.
Figures 1A–1C of Skerlos are reproduced below.

Figures 1A–1C of Skerlos depict the pulse train of a transmitted control
signal in Skerlos’s IR remote control system. Id. at 2:48–51.
Figure 1A shows the output waveform of a transmitted IR signal,
which is repeated every 180 milliseconds. Id. at 3:20–22. Each series of
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pulses is pulse code modulated as illustrated in Figure 1B, which shows in
expanded form the arrangement of pulse code modulation for an individual
pulse train. Id. at 3:22–25. Figure 1C shows pulses that represent the
ON/OFF pulsing of the IR transmitter’s light emitting diodes (LEDs). Id. at
3:31–33.
3. Caris (Ex. 1007)
Caris addresses perceived disadvantages in conventional
programming of a remote control to be used with consumer electronics
equipment. Ex. 1007, 3:24–49.
Figure 1 of Caris is reproduced below.

Figure 1 is a block diagram of system 100, which includes remote control
device 102, appliance 104 (which is connected to Internet 106), and server
108. Id. at 5:25–30.
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In this example, appliance 104 comprises a set top box (STB)
purchased by a consumer in combination with remote control device 102 for
operating appliance 104 via, e.g., infrared transmitter 110 and receiver 112.
Id. at 5:30–33. Remote control device 102 has hard buttons (such as
dedicated button 118) or a touch screen, and “is programmable in order to
adopt control codes for other IR- or RF-controllable equipment, e.g.,
appliance 114, that the consumer has installed or will install in his/her home
116.” Id. at 5:27–29; 5:34–37. “The IR or RF code transmitted by remote
102 upon the consumer activating button 118 is interpreted by [set top box]
104 as a request to send a message to server 108.” Id. at 5:46–49. Server
108 has database 120, which “relates types, versions and brands of apparatus
to their individual command control code sets and [user-interface] aspects.”
Id. at 5:58–60. Remote control device 102 may be programmed via infrared
or radio-frequency blaster 122 connected to appliance 104. Id. at 6:4–5.
When positioned close to, and with input 124 facing, blaster 122, remote
control device 102 receives and processes an incoming stream of data that
comprises the control codes and user-interface data requested from server
108, and potentially also certain user customizations. Id. at 6:5–12.
Caris describes an alternative embodiment using a look-up table. Id.
at 6:53–7:8. Figure 2 of Caris is reproduced below.
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Figure 2 illustrates a system in which remote control device 202 is
preprogrammed. Id. at 6:53–55.
In this embodiment, remote control device 202 uses a fixed protocol
to communicate with set-top box 104 for controlling apparatus 114. Id. at
6:55–57. In response to activating dedicated hard button 118 on remote
control device 202, set-top box 104 connects to a server on the Internet,
downloads “data representative of a control code for control of apparatus
114,” and stores the data in look-up table 204 that associates an input
received from remote 202 with an output as programmed. Id. at 6:58–7:4.
The output is now the data for the control command required for control of
apparatus 114 via STB 104. Id. at 7:4–5. Specific codes are then retrieved
when receiving subsequent inputs from remote control device 202. Id. at
7:2–5.
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4. Dubil (Ex. 1008)
Dubil “relates to remote control devices and to a service for enabling
the programming of remote controls to be used with consumer electronics
(CE) equipment.” Ex. 1008, 1:6–8. According to Dubil, “[a]n Internet
service makes available control codes for use on a programmable universal
remote.” Id., Abstr. A server supplies the control codes as XML data that
gets processed at the receiver’s set top box or personal computer (PC), or the
remote itself. Id.
Figure 1 of Dubil is reproduced below.

Figure 1 is a block diagram of system 100, which comprises server 102
connected via Internet 104 to appliance 106, such as a set-top box or
personal computer, at a user’s home. Id. at 4:48–51.
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The user has “universal programmable remote control device 108,”
which includes transmitter 112 for sending IR or RF control codes to
electronics equipment, such as TVs, VCRs, CD players, set-top boxes, DVD
players, audio pre-amplifiers and tuners, etc. Id. at 4:51–57. Input 114 of
remote control device 108 allows for communication with appliance 106.
Id. at 4:57–59.
Server 102 includes database 116, which maintains an inventory of IR
and RF control codes for commercially available consumer electronics
equipment of various brands and types. Id. at 4:60–62. The codes
maintained in database 116 are formatted as XML (Extensible Markup
Language) documents such that “relevant parameters of a particular control
code or command are defined using XML tags.” Id. at 4:64–66. According
to Dubil, control codes, such as IR or RF codes, can be described using a
number of parameters defined by XML tags, for example, IR or RF carrier
frequency, duty cycle, protocol type (FSK, biphase, PWM, etc.), repetition
time, on/off times of the signal, bit pattern of the command code, semantic
meaning of the code, type of device for which it is intended (CD, VCR, TV,
DVD, etc.), the brand name of the specific protocol, etc. Id. at 2:61–3:1;
4:33–41.
In operation, “[t]he user requests via appliance 106 a code set from
server 102 for control of the apparatus, type, brand, serial no., etc., as
specified by the user and to be controlled via remote 108.” Id. at 5:6–8. For
example, a set top box (STB) may download IR codes based on the user
input “descriptive of the device to be controlled, its brand and type number.”
Id. at 3:5–8. Server 102 runs a query and, if there is a match, supplies the
associated set of codes via Internet 104 to appliance 106 (or the STB) as an
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XML document. Id. at 5:11–13. Appliance 106 has XML application 118
that extracts the data based on the relevant tags and interprets the data
according to the semantics of the tags in order to generate the control codes
for remote 108. Id. at 5:14–17. The control codes are then supplied to
remote 108 for installation and remote control operation. Id. at 5:18–26.
E. Obviousness over Caris and Dubil
Petitioner asserts that claims 1–5 are unpatentable under 35 U.S.C.
§ 103(a) over the combination of Caris and Dubil. Pet. 35–55.
1. Discussion of Independent Claim 1 —
Differences Between the Claimed Subject Matter and the Prior Art
In addressing the recitations of claim 1, Petitioner relies on an
embodiment of Caris illustrated in Figure 2 of Caris (reproduced above in
Section III.D.3). Pet. 39–53. Specifically, Petitioner draws a
correspondence between (1) the recited “first device” and Caris’s set top box
(STB); (2) the recited “second device” and Caris’s appliance/consumer
electronics (CE) equipment/apparatus 114; and (3) the recited “third device”
and Caris’s remote control. Id. at 39–40 (citing Ex. 1007, 6:53–7:5, Fig. 2).
Petitioner further draws a correspondence between (4) the recited “receiver”
and Caris’s receiver 112 included in the STB (id. at 40 (citing Ex. 1007,
5:30–33, Fig. 2)); and (5) the recited “transmitter” and Caris’s “IR or RF
transmitter in the front bezel,” which is an “IR or RF blaster” that is
connected to or integrated within the STB (id. at 41 (citing Ex. 1007, 3:65–
4:4, 4:47–51, 6:57–58)).
In making these correspondences or mappings, Petitioner relies
generally on Caris’s described functionality to meet the limitations of
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claim 1 requiring to “generate a key code using a keystroke indicator
received from a third device” and “transmit the . . . key code to the second
device in a key code signal.” Id. at 44–45, 48–49. Petitioner relies on
Dubil’s disclosure in addressing the “format the key code” limitation,
contending that a person of ordinary skill in the art would have looked to
Dubil for “operational details” that are not explicitly described in Caris. Id.
at 45–48.
Petitioner also asserts that Caris teaches “[a] first device for
transmitting a command to control a functional operation of a second
device,” as recited in the preamble of claim 1 because Caris’s STB (the
claimed “first device”)
downloads control codes (i.e., key codes) and programs these
codes into a “look-up table 204 that associates an input received
from remote 202 with an output as programmed.” The output is
now the data for the control command required for control of
apparatus 114 [the claimed “second device”] via STB 104.
Id. at 39–40 (alteration added) (citing Ex. 1007, 6:66–7:5, Fig. 2).
Patent Owner does not dispute that Caris teaches “a first device,” “a
second device,” “a third device,” “a receiver,” “a transmitter,” and the
preamble of claim 1. See PO Resp. 42–54.
Based on the complete record and for the reasons explained by
Petitioner, we find that Petitioner has demonstrated sufficiently Caris
teaches “a first device,” “a second device,” “a third device,” “a receiver”
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(limitation [1.1]), “a transmitter” (limitation [1.2]), and the preamble5 of
claim 1.6
Patent Owner disputes Petitioner’s showing with respect to the rest of
the limitations of claim 1, and also disputes Petitioner’s rationale for
combining the teachings of Caris and Dubil. See PO Resp. 39–54. We
address each of these disputed issues below.
a. Limitations [1.3] and [1.4]
Claim 1 recites “a processing device coupled to the receiver and the
transmitter” and “a memory storing instructions executable by the
processing device, the instructions causing the processing device to”
perform the steps to “generate a key code,” “format the key code,” and
“transmit the formatted key code.” Ex. 1001, 10:47–60. Petitioner
designates the recited “processing device” and “memory” limitations as
limitations [1.3] and [1.4], respectively. Pet. 42, 43. Petitioner also
designates the limitations reciting the steps or functions performed by the
processing device, i.e., the limitations reciting “generate a key code,”
“format the key code,” and “transmit the formatted key code,” as limitations
[1.4.1], [1.4.2], and [1.4.3], respectively. Id. at 44, 45, 48.

5 Because Petitioner has shown that the recitations in the preamble are
satisfied by Caris, we need not determine whether the preamble is limiting.
See Vivid Techs., 200 F.3d at 803.
6 We also find that Patent Owner has waived any argument directed to these
recitations of claim 1. See Paper 8 (Scheduling Order), 8 (“Patent Owner is
cautioned that any arguments for patentability not raised in the response may
be deemed waived.”).
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Petitioner asserts that “Caris describes the functionality of an STB as
well as a receiver and a transmitter.” Pet. 42; see also id. at 39–41 (citing
Ex. 1007, 3:65–4:4, 4:47–51, 5:30–33, 6:53–7:5, Fig. 2). Although
Petitioner acknowledges that Caris does not explicitly describe “the
processing device of the STB” that is used for performing the described
functions, Petitioner asserts, supported by the testimony of Dr. Russ, “in
view of the STB functionality described in Caris, a [person of ordinary skill
in the art] would have found it obvious that this functionality would have
been performed using a processing device coupled to the receiver and the
transmitter.” Id. at 42 (citing Ex. 1003 ¶ 173). Similarly, Petitioner
contends, with support from Dr. Russ, that although “Caris does not
explicitly describe memory used to store instructions executable by the
processing device,” “a [person of ordinary skill in the art] would have found
it obvious that for Caris to perform the functions of identifying and
transmitting a key code, the STB would include memory with instructions
executed by a processing device.” Id. at 43 (citing Ex. 1003 ¶ 178).
Addressing first the “processing device” limitation, Petitioner asserts,
citing the testimony of Dr. Russ, that “STBs using processing devices to
process received commands and to transmit key codes were well-known in
the art prior to the earliest priority date of the ’325 patent” and, therefore, a
person of ordinary skill in the art would have understood that Caris’s STB
includes a processing device in order to perform the functions described in
Caris. Pet. 42 (citing Ex. 1003 ¶¶ 173–176). In the cited paragraphs of his
Declaration, Dr. Russ refers to his discussion of the electronic consumer
device control technology well-known in the art before the priority date of
the ’325 patent and testifies that “STBs typically included processing
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devices such as processors or microcontrollers that controlled the
functionality of the STBs.” Ex. 1003 ¶¶ 173–174 (citing Ex. 1003 § VI.C
(¶¶ 62–79)). In particular, Dr. Russ discusses U.S. Patent No. 6,909,471 B2
(Ex. 1018, “Bayley”) and opines that Bayley “depicts an example STB
configuration which includes a processor used to control the volume of a TV
in response to receiving a command from a remote control.” Ex. 1003 ¶ 174
(citing Ex. 1018, 5:12–20, Fig. 2). Dr. Russ further discusses the operation
of the processor described in Bayley and testifies that “[a]s illustrated in
Bayley, processing devices in STBs were well-known prior to the ’325
patent and executed instructions in memory to receive commands and
transmit corresponding control codes.” Id. ¶ 175 (citing Ex. 1018, 3:31–39).
Citing his additional discussion of the electronic consumer device control
technology well-known in the art at the time of the priority date of the ’325
patent, Dr. Russ opines that
A [person of ordinary skill in the art] would have understood that
STBs would receive a command from a remote control and use
a processing device to interpret the command and identify a
corresponding key code. The STBs would also identify potential
parameters, such as modulation and timing parameters, used to
transmit the key code to another device. A processing device
would be used to access memory and retrieve the corresponding
key code as well as perform the modulation of the key code for
transmission.
Id. ¶ 176 (citing Ex. 1003 §§ VI.A–D (¶¶ 39–91)). Based on his
discussion and the cited evidence, Dr. Russ testifies that a person of
ordinary skill in the art “would have understood that Caris’ STB
would include a processing device in order to perform the functions
described in Caris.” Id.
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Addressing the “memory” limitation, Petitioner asserts that Caris’s
description of “look-up table 204” within the STB suggests that Caris’s STB
includes a memory accessible by a processing device. Pet. 43 (citing
Ex. 1007, 7:2–5; Ex. 1003 ¶ 177). In an argument closely related to its
argument on the “processing device” limitation, Petitioner further asserts,
citing the testimony of Dr. Russ, that “STBs typically included processing
device with corresponding memory such as read-only memory (ROM) that
would store instructions executed by the processing device to perform STB
operations” and, therefore, “a [person of ordinary skill in the art] would have
found it obvious that for Caris to perform the functions of identifying and
transmitting a key code, the STB would include memory with instructions
executed by a processing device.” Id. (citing Ex. 1003 ¶¶ 178–183).
In the cited paragraphs of his Declaration, Dr. Russ discusses Bayley
as depicting “a well-known memory device including a database as well as
an OS (operating system), volume control application, and driver for
operating volume controls.” Ex. 1003 ¶ 178 (citing Ex. 1018, 1:56–58,
6:41–48, Fig. 2). Dr. Russ further discusses the details of Bayley’s memory
system 230, which “may include any one or combination of volatile memory
elements (e.g., random access memory (RAM), dynamic RAM (DRAM),
static RAM (SRAM), synchronous DRAM (SDRAM), magnetic RAM
(MRAM), etc.) and nonvolatile memory elements (e.g., read only memory
(ROM), hard drive, tape, compact disk ROM (CD-ROM), etc.).” Id. ¶ 179
(quoting Ex. 1018, 3:40–46). Dr. Russ also discusses the operation of
Bayley’s STB, where “the processor 224 is configured to execute software
stored within the memory system 230, to communicate data to and from
the memory system 230, and to generally control operations of the DHCT
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[STB] 200 pursuant to the software.” Id. ¶ 181 (quoting Ex. 1018, 3:31–
39). According to Dr. Russ, as illustrated in Bayley, it was well-known to
those of ordinary skill in the art to “use memory to include instructions to
facilitate the operations of a processing device” and “controls such as the
volume control . . . would have been performed using instructions
executable by processing devices.” Id. ¶ 182. As explained above with
respect to the “processing device” limitation, Dr. Russ discusses the
operation of the processor described in Bayley and testifies that “[a]s
illustrated in Bayley, processing devices in STBs were well-known prior to
the ’325 patent and executed instructions in memory to receive commands
and transmit corresponding control codes.” Id. ¶ 175 (citing Ex. 1018, 3:31–
39).
Patent Owner makes several arguments to assert that Petitioner does
not make a sufficient showing. First, Patent Owner asserts that there is no
explicit teaching or suggestion in Caris of a processing device or memory
used to store instructions executable by the processing device. See PO Resp.
42, 43. We disagree with Patent Owner’s argument.
To start, Petitioner’s theory of unpatentability is one of obviousness.
Under 35 U.S.C. § 103, the obviousness inquiry turns not only on the prior
art, but whether “the differences between the claimed invention and the prior
art are such that the claimed invention as a whole would have been obvious
. . . to a person having ordinary skill in the art to which the claimed
invention pertains.” Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330,
1337 (Fed. Cir. 2020) (quoting 35 U.S.C. § 103). And “the inquiry into
whether any ‘differences’ between the invention and the prior art would
have rendered the invention obvious to a skilled artisan necessarily depends
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on such artisan’s knowledge.” Id. (emphasis added) (citing Dow Jones &
Co. v. Ablaise Ltd., 606 F.3d 1338, 1349, 1353 (Fed. Cir. 2010); Arendi
S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016); Randall Mfg. v.
Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013)).
Here, as discussed above, Petitioner asserts, supported by the
testimony of Dr. Russ, a person of ordinary skill in the art would have
understood that Caris’s STB includes a processing device to “perform the
functions described in Caris.” Pet. 42 (citing Ex. 1003 ¶¶ 173–176). In the
cited paragraphs of his Declaration, Dr. Russ testifies that a person of
ordinary skill in the art would have understood that Caris’s STB would
include a processing device and that the functions performed by the
processing device would include operations to interpret the command
received from a remote control, identify a corresponding key code, access
memory and retrieve the corresponding key code, and “perform the
modulation of the key code for transmission.” Ex. 1003 ¶¶ 173–176.
Similarly, Dr. Russ testifies that as illustrated in Bayley, it was well-known
to those of ordinary skill in the art to “use memory to include instructions to
facilitate the operations of a processing device” and “controls such as the
volume control . . . would have been performed using instructions
executable by processing devices.” Id. ¶ 182. Dr. Russ further explains that
“[a]s illustrated in Bayley, processing devices in STBs were well-known
prior to the ’325 patent and executed instructions in memory to receive
commands and transmit corresponding control codes.” Id. ¶ 175 (citing
Ex. 1018, 3:31–39). Dr. Russ’s testimony is corroborated by Bayley and
other evidence of the electronic consumer device control technology that
was well-known to ordinary artisans before the priority date of the ’325
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patent, as discussed in the Russ Declaration. See id. ¶¶ 174–176 (citing
Ex. 1003 §§ VI.A–D (¶¶ 39–91); Ex. 1018, 3:31–39, 5:12–20, Fig. 2),
¶¶ 178–183 (citing Ex. 1018, 1:56–58, 3:31–46, 6:41–48, Fig. 2).
Patent Owner argues that Bayley is not included in the asserted
ground and that Petitioner has not presented any motivation to combine
Bayley with Caris and Dubil. PO Resp. 43–44; PO Sur-reply 12; Ex. 2003
¶ 236. The record is clear, however, that Petitioner’s asserted ground (upon
which we instituted trial) is based on Caris and Dubil and that the additional
references discussed by Dr. Russ, including Bayley, are being relied on
exclusively for their documentation of what was well-known in the art. See
Ex. 1003 ¶¶ 173–176. As such, Petitioner’s use of Bayley is proper in the
asserted ground of obviousness over Caris and Dubil because “[a]rt can
legitimately serve to document the knowledge that skilled artisans would
bring to bear in reading the prior art identified as producing obviousness.”
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir.
2015) (citing Randall Mfg., 733 F.3d at 1362–63); see also Lone Star Silicon
Innovations LLC v. Iancu, 809 F. App’x 773, 777 (Fed. Cir. 2020) (finding
that the petitioner properly relied on additional references in an asserted
ground of obviousness over Watatani and Tanaka when “the additional
references were being relied on exclusively for their teachings about what
was well-known in the art”) (nonprecedential).
Next, Patent Owner, observing that claim 1 requires the claimed
processing device to “generate a key code,” “format the key code,” and
“transmit the formatted key code,” contends that Petitioner does not show
that Caris teaches limitation [1.3] because Petitioner fails to assert that
Caris’s processing device is used to “format the key code.” PO Resp. 42–
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43; PO Sur-reply 11. In a related argument, Patent Owner asserts that Caris
does not teach a processor for performing the claimed functions because, as
conceded by Petitioner, “Caris does not explicitly describe the format of the
key codes or the operational details for transmitting the key codes.” PO
Resp. 42 (citing Pet. 52); PO Sur-reply 11.
We disagree with Patent Owner’s arguments. Limitation [1.3] does
not recite formatting the key code or any particular format of the key code.
Nor does it recite “generate a key code,” “transmit the formatted key code,”
or any operational details for transmitting the key codes. The Petition
addresses these functions with respect to limitations [1.4.1], [1.4.2], and
[1.4.3]. See Pet. 44–49. As discussed below with respect to limitation
[1.4.2], Petitioner shows sufficiently that the combination of Caris and Dubil
teaches or suggests the recited function of “format the key code for
transmission to the second device” performed by the processing device. See
id. at 45–48. And as discussed below with respect to limitations [1.4.1] and
[1.4.3], Petitioner also shows sufficiently that Caris teaches the functions
“generate a key code” and “transmit the formatted key code” performed by
the processing device. Id. at 44–45, 48–49. Indeed, in its Reply, Petitioner
clarifies that “a [person of ordinary skill in the art] would have understood
that Caris’s STB would include a processing device in order to perform the
functions described in Caris and the functions in the Caris/Dubil
combination.” Pet. Reply 15 (citing Pet. 42, 44–49; Ex. 1003 ¶¶ 173–176;
Ex. 1030 ¶ 44).
Patent Owner contends that Petitioner’s mention of “the functions in
the Caris/Dubil combination” in the Reply is a “brand new” argument
because the Petition “[did] not rely on Dubil for this claim element,” i.e.,
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limitation [1.3]. PO Sur-reply 11 (emphasis added) (citing PO Resp. 43).
Again, limitation [1.3] does not recite formatting the key code or any
particular format of the key code. As discussed above, it is apparent on the
face of the Petition that Petitioner relies on the combination of Caris and
Dubil to teach limitation [1.4.2] reciting the function “format the key code
for transmission to the second device” performed by the processing device.
Pet. 45–48. Thus, we disagree with Patent Owner’s argument that
Petitioner’s Reply presents a new argument.
Next, regarding the “memory” limitation, Patent Owner argues that in
Bayley, executable instructions can be stored in many places, including a
CD-ROM, and, therefore, “do not have to be stored in a memory on the first
device, as required by the claim.” PO Resp. 44 (citing Ex. 1003 ¶ 179;
Ex. 2003 ¶¶ 245–246; Ex. 2010 (Russ Dep.), 51:16–53:2); see also PO Sur-
reply 12 (citing Ex. 1003 ¶ 179; Ex. 2003 ¶ 246).
As discussed by Dr. Russ, however, Bayley’s memory system 230 is
included in DHCT 200, which is a set-top box. See Ex. 1003 ¶ 178 (citing
Ex. 1018, 1:56–58, Fig. 2); see also Ex. 1018, 1:10–14 (“In implementing
enhanced programming, the home communication terminal (‘HCT’),
otherwise known as the set-top box, has become an important computing
device for accessing various video services.” (emphasis added)), 3:27–29
(“As shown in FIG. 2, the DHCT 200 includes at least one processor 224
and memory system 230, among other components.”). Dr. Russ further
explains that Bayley’s memory system 230 (included in the set-top box)
“may include any one or combination of volatile memory elements,” such as
random access memory (RAM), and “nonvolatile memory elements (e.g.,
read only memory (ROM) . . . compact disk ROM (CD-ROM), etc.).”
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Ex. 1003 ¶ 179 (citing Ex. 1018, 3:40–46). Thus, contrary to Patent
Owner’s contention, Bayley does not “confirm[] that executable instructions
do not have to be stored in a memory on the [set-top box] . . . , but instead
can be stored on a separate CD-ROM among many other places.” See PO
Resp. 44 (alteration and emphasis added). Rather, as Dr. Russ explains,
Bayley illustrates that “STBs typically used memory along with a processing
device to perform functions such as transmitting key codes” and that “[a]
processing device executing instructions from memory in an STB was a
well-known STB configuration.” Ex. 1003 ¶¶ 177–183. Nothing in the
evidence cited by Patent Owner shows otherwise.
Thus, Patent Owner does not offer any evidence that contradicts or
negates Petitioner’s evidence, e.g., Dr. Russ’s testimony and the
corroborating evidence cited by Dr. Russ. See PO Resp. 42–44 (citing
Ex. 2003 ¶¶ 234–249). Dr. Sprenger, Patent Owner’s declarant, in the cited
paragraphs of his Declaration, essentially repeats Patent Owner’s arguments
but does not present any evidence that contradicts or negates Dr. Russ’s
testimony or the corroborating evidence cited by Dr. Russ, including Bayley.
See Ex. 2003 ¶¶ 234–249.
We credit Dr. Russ’s testimony and are persuaded by Petitioner’s
argument and the cited evidence that, in view of what was well-known to
ordinarily skilled artisans, it would have been obvious to a person of
ordinary skill in the art that Caris’s STB would include a processing device
that performs the claimed functions, including the functions to “generate a
key code,” “format the key code,” and “transmit the formatted key code”
and that for Caris to perform the claimed functions, the STB would include
memory storing instructions executed by the processing device. See Pet. 42–
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43; Ex. 1003 ¶¶ 173–183; see also Koninklijke Philips, 948 F.3d at 1338
(finding that the Board properly determined that the challenged claims
would have been obvious over the cited prior art “in light of the general
knowledge of a skilled artisan” when “the Board relied on expert evidence,
which was corroborated by Hua, in concluding that pipelining was not only
in the prior art, but also within the general knowledge of a skilled artisan”
and the patent owner “offered no evidence to rebut the conclusion that a
skilled artisan would have known about pipelining”).
For the foregoing reasons and based on the complete record, we
determine that Petitioner has demonstrated sufficiently that it would have
been obvious to a person of ordinary skill in the art that Caris’s STB would
include “a processing device coupled to the receiver and the transmitter” and
“a memory storing instructions executable by the processing device, the
instructions causing the processing device to” perform the claimed
functions, as recited in claim 1.
b. Limitation [1.4.1]
Claim 1 recites “generate a key code using a keystroke indicator
received from a third device in communication with first device via use of
the receiver, the keystroke indicator having data that indicates an input
element of the third device that has been activated,” which Petitioner
designates as limitation [1.4.1]. Pet. 44. As discussed above, Petitioner
maps the recited “first device” to Caris’s set top box (STB) and the recited
“third device” to Caris’s remote control. Id. at 39–40 (citing Ex. 1007,
6:53–7:5, Fig. 2). In addressing the recitations of limitation [1.4.1],
Petitioner also draws a correspondence between (1) the recited “key code”
and the control codes identified from Caris’s look-up table 204 (id. at 44)
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and (2) the recited “keystroke indicator received from a third device” and
Caris’s “IR or RF code” transmitted by remote control device 202 to the
STB upon activation of dedicated button 118, or as input received from
remote control device 202 by the STB (id. at 44–45).
Petitioner presents two alternative theories that rely on different
identifications of the “keystroke indicator” in Caris, as noted above. We
focus on the second of these theories, which we find more directly supports
Petitioner’s contention that the limitation is taught by Caris. Specifically,
Petitioner identifies the “keystroke indicator” recited in limitation [1.4.1] as
the “input received from remote 202” described in the following disclosure
of Caris: “The data gets programmed into a look-up table 204 that
associates an input received from remote 202 with an output as
programmed.” Pet. 45; Ex. 1007, 7:2–5 (emphasis added). Dr. Russ
explains that a person of ordinary skill in the art would have understood that
this input refers to commands corresponding to buttons on the remote
control device other than dedicated hard button 118, such as a “channel up”
button. Ex. 1003 ¶ 186; see also Pet. 45 (citing Ex. 1003 ¶¶ 186–187).
According to Dr. Russ, Caris teaches limitation [1.4.1] reciting “generate a
key code using a keystroke indicator received from a third device” because
Caris describes that after receiving the input, the STB subsequently
identifies and retrieves the corresponding key code from look-up table 204.
Ex. 1003 ¶ 187 (citing Ex. 1007, 7:2–4); see Pet. Reply 16 (“a particular key
code stored in the look-up table is retrieved in response to ‘input received
from remote 202’”) (citing Pet. 44–45; Ex. 1007, 6:58–7:5). Because this
identification is consistent with our adopted construction of the “generate a
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key code using a keystroke indicator” limitation, Petitioner makes a
sufficient showing. See supra § III.C.4.
Patent Owner disputes this showing “because Caris does not disclose
that the ‘input received from remote 202’ (the alleged ‘the keystroke
indicator’) is distinct from a key code, nor does Petitioner assert that it is.”
PO Resp. 45 (citing Pet. 45, Ex. 1003 ¶¶ 186–187); PO Sur-reply 13. But
Petitioner’s theory relies on different elements of Caris for the “keystroke
indicator” and the generated “key code,” with the latter resulting from a
specific look-up operation that relies on the former, such that we find those
identifications consistent with our adopted constructions of those terms.
Patent Owner next asserts that “Petitioner fails to present any
argument or evidence regarding the limitation ‘the keystroke indicator
having data that indicates an input element of the third device that has been
activated’” because “Petitioner fails to identify any data to show how ‘this
input . . . would also indicate that an ‘input element’ of the remote control
had been activated.’” PO Resp. 46–47 (underlined emphasis added) (citing
Pet. 45); PO Sur-reply 13.
As discussed above, however, Petitioner relies on the specific
operation of Caris’s look-up table 204 “that associates an input received
from remote 202 with an output as programmed.” Pet. 44–45 (citing
Ex. 1007, 6:58–7:5; Ex. 1003 ¶¶ 186–187); Pet. Reply 16 (citing Pet. 44–45;
Ex. 1007, 6:58–7:5). In the cited paragraph of his Declaration, Dr. Russ
testifies
[A]fter receiving the input, Caris describes retrieving a key code
from “look-up table 204” corresponding to the input to generate
a corresponding output “control command.” A [person of
ordinary skill in the art] would have understood that this retrieval
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of this control command would also teach the claimed generating
of a key code using the keystroke indicator signal.
Ex. 1003 ¶ 187 (emphasis added) (citing Ex. 1007, 7:2–4). In its Reply,
Petitioner elaborates that
UEI does not address the specific operation of Caris’s look-up
table “that associates an input received from remote 202 with an
output as programmed.” . . . Specifically, a particular key code
stored in the look-up table is retrieved in response to “input
received from remote 202.” Thus . . . this “input” discloses the
claimed keystroke indicator, and Caris’s use of the look-up table
discloses generating a key code.
Pet. Reply 16 (emphasis added) (citing Pet. 44–45; Ex. 1007, 6:58–7:5;
Ex. 1030 ¶ 47). The cited passage of Caris describes that
The data gets programmed into a look-up table 204 that
associates an input received from remote 202 with an output as
programmed. The output is now the data for the control
command [i.e., the generated key code] required for control of
apparatus 114 via STB 104.
Ex. 1007, 7:2–5 (alteration and emphases added). Based on the record
presented, we understand Petitioner to argue that a person of ordinary skill in
the art would have understood the operation of Caris’s look-up table to
generate the key code by identifying the entry in the look-up table that
matches the data from the received input with the data for the corresponding
key code. We find that Petitioner’s and Dr. Russ’s understanding is
sufficiently supported by the cited disclosures of Caris and the inferences
which one skilled in the art would reasonably be expected to draw from
them. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering
the disclosure of a reference, it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
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in the art would reasonably be expected to draw therefrom.”). Thus, we
agree with Petitioner that the specific operation of Caris’s look-up table
relied upon by Petitioner teaches or suggests the “generate a key code”
limitation to a person of ordinary skill in the art, including the recitation “the
keystroke indicator having data that indicates an input element of the third
device that has been activated.” Accordingly, based on the complete record,
we find that Petitioner shows sufficiently that Caris teaches or suggests
limitation [1.4.1].
c. Limitation [1.4.2]
Claim 1 recites “format the key code for transmission to the second
device,” which Petitioner designates as limitation [1.4.2]. Pet. 45. For this
limitation, Petitioner asserts that the combination of Caris with Dubil teaches
this limitation by describing “modulation of the key code onto an infrared
carrier signal.” Id. at 46–47.
First, Petitioner asserts that the Specification of the ’325 patent does
not use the term “format” or provide an explicit definition for “formatting” a
key code for transmission. Id. at 46 (citing Ex. 1003 ¶ 189); see also id. at
22 (citing Ex. 1003 ¶ 134). Petitioner argues that the Specification instead
describes modulating a key code onto a carrier signal to transmit the key
code to the second device, such as a television set. Id. at 46 (citing
Ex. 1001, 7:2–24); see also id. at 22 (citing Ex. 1001, 6:48–65). For
instance, Petitioner asserts that Figure 5 of the ’325 patent depicts a
“formatted” version of a key code generated by modulating the key code
(i.e., modulating the binary values of ones and zeros representing the key
code) onto a carrier signal. Id. at 22–23 (citing Ex. 1001, 4:47–55, 5:21–27,
6:48–65, Figs. 3, 5). Petitioner argues, therefore, that a person of ordinary
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skill in the art would have understood from these disclosures in the
Specification that the recited “format[ting] the key code for transmission”
would encompass “using the well-known technique of modulating the key
code onto a carrier signal to prepare the key code for transmission.” Id. at
23 (citing Ex. 1001, 1:48–53; Ex. 1003 ¶¶ 134–136); see also id. at 46
(citing Ex. 1001, 1:48–53; Ex. 1003 ¶ 190).
In the Institution Decision, we noted that the language of other
limitations of claim 1 supports Petitioner’s position. Inst. Dec. 19–20; see
Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed.
Cir. 2003) (“While certain terms may be at the center of the claim
construction debate, the context of the surrounding words of the claim also
must be considered in determining the ordinary and customary meaning of
those terms.”). In particular, claim 1 recites that “the codeset further
comprises time information that describes how a digital one and/or a digital
zero within the selected one of the plurality of key code data is to be
represented in the key code signal to be transmitted to the second device.”
Ex. 1001, 11:1–5 (emphases added). This language indicates or suggests
that the recited “format[ting] the key code for transmission to the second
device” is about “how a digital one and/or a digital zero . . . of [a] key code
. . . is to be represented in the key code signal to be transmitted to the second
device,” which is described in the “time information” included in the
codeset.
Turning to the Specification, the ’325 patent describes that the “timing
information” in the codesets “describes how the key codes should be
modulated onto carrier signals to generate key code signals.” Id. at 1:48–53
(emphases added). That is, the Specification explains that the “time
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information” in the codeset recited in claim 1 that describes arranging digital
ones and digital zeros of a key code in a key code signal for transmission—
i.e., arranging a key code into a format of a signal for transmission—is the
same information that describes “modulating” the key code onto carrier
signals for transmission.
In the Institution Decision, we noted that Patent Owner in its
Preliminary Response did not propose any construction of “format the key
code for transmission” or otherwise sufficiently described flaws in
Petitioner’s claim construction position. Inst. Dec. 19. Thus, based on the
preliminary record, we agreed with Petitioner that “format[ting] the key code
for transmission” recited in claim 1 encompasses “modulating the key code
onto a carrier signal to prepare the key code for transmission.” Id. at 20.
During the trial, Patent Owner has not disputed our preliminary construction,
nor has it proposed a different construction for the term “format the key code
for transmission.” See PO Resp. 11–15. Based on the complete record, for
this Final Written Decision, we construe the term “format the key code for
transmission” to encompasses “modulating the key code onto a carrier signal
to prepare the key code for transmission.”
Petitioner asserts that Caris teaches this type of formatting and
transmission by describing wireless transmission of a control code to “IR- or
RF-controllable equipment, e.g., appliance 114” via a “wired or wireless link
with apparatus 114.” Pet. 46 (citing Ex. 1007, 5:35–37; 6:57–58; 7:4–5).
Citing the testimony of Dr. Russ, Petitioner argues that a person of ordinary
skill in the art would have known that such wireless transmission would be
accomplished via “the modulation of the key code onto an infrared carrier
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signal,” as acknowledged in the ’325 patent as a well-known wireless
transmission protocol. Id. (citing Ex. 1001, 1:48–53; Ex. 1003 ¶ 191).
Although Petitioner acknowledges that Caris does not explicitly
describe the operational details behind the wireless transmission of key
codes, Petitioner argues, citing the testimony of Dr. Russ, a person of
ordinary skill in the art would have looked to references such as Dubil to
understand these operational details for formatting or modulating the key
codes for transmission. Pet. 46–47 (citing Ex. 1003 ¶ 191). Petitioner
further contends that Dubil describes specific modulation schemes, including
frequency-shift keying (“FSK”), binary phase-shift keying (“BPSK”), and
pulse-width modulation (“PWM”). Id. at 47 (citing Ex. 1008, 2:61–3:8,
4:33–47, 4:60–5:5). Petitioner also asserts that Dubil describes using those
modulation techniques to format and transmit “IR or RF codes” on an “IR or
RF carrier frequency.” Id. (citing Ex. 1008, 2:61–3:8; 4:66–5:3).
Dr. Russ explains that the details of the modulation techniques
mentioned in Dubil were well-known to persons of ordinary skill in the art.
Ex. 1003 ¶ 192. In support of his testimony, Dr. Russ cites his discussion of
various prior art references in the Background section of his Declaration. Id.
(citing Ex. 1003 §§ VI.A, VI.B, VI.D). In the cited portions of his
Declaration, Dr. Russ discusses several references, including Hill
(Ex. 1021), Mikhak (Ex. 1022), Emelko (Ex. 1023), and Landry (Ex. 1024),
and explains that the cited references show that the details of the modulation
techniques, such as FSK, PWM, and BPSK, were well-known to those of
ordinary skill in the art. Ex. 1003 ¶¶ 80–91.
Citing the testimony of Dr. Russ, Petitioner argues that a person of
ordinary skill in the art would have understood that Dubil’s technique of
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using well-known modulation protocols and IR and RF carrier frequencies to
format and transmit control codes would similarly be used in Caris’s STB
for wireless transmission via an IR or RF transmitter. Pet. 47 (citing
Ex. 1003 ¶ 192).
Supported by the testimony of Dr. Russ, Petitioner provides a
motivation for the combination of teachings by explaining that a person of
ordinary skill in the art using the STB described in Caris and looking to
understand how Caris formats and transmits its control codes would have
recognized that Dubil provided that understanding because, among other
reasons, both Caris and Dubil describe set-top boxes that retrieve and
transmit key codes. Pet. 48 (citing Ex. 1003 ¶¶ 193, 169; Ex. 1007, 6:58–
7:5; Ex. 1008, 4:60–5:26). Petitioner asserts, supported by testimony of
Dr. Russ, “[i]mplementing the modulation techniques described in Dubil
with the STB described in Caris would result in merely combining known
elements to yield predictable results.” Id. (citing Ex. 1003 ¶¶ 193, 169).
Patent Owner disputes Petitioner’s reasoning to combine the teachings
because Caris and Dubil “teach away from one another,” and because
“neither Petitioner nor its expert provides any reason why a [person of
ordinary skill in the art] would have sought to modulate the signals
transmitted in Caris [onto a carrier signal].” PO Resp. 39–41.
First, Patent Owner contends that Petitioner does not establish
sufficient motivation to combine Caris and Dubil because Petitioner and
Dr. Russ “assumed that modulation onto a carrier signal is inherently
required, which is the exact assumption the Board previously rejected.” PO
Resp. 39, 48 (citing Ex. 2007, 376). To the extent Patent Owner implies that
Petitioner’s argument in this proceeding is akin to the arguments advanced
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in the earlier IPR, we disagree. On its face, the Petition advances neither an
anticipation ground nor a single-reference obviousness ground that requires
finding a reference inherently to disclose modulation of a key code onto a
carrier signal. See Ex. 2007, 373–376. Instead, unlike the conflation of
inherent anticipation with single-reference obviousness that the Board found
problematic in the earlier IPR, the instant Petition identifies additional prior
art that describes modulation in the form of Dubil, and articulates reasons for
effecting the proposed combination.
Next, Patent Owner contends that Caris and Dubil “teach away from
one another” because “Caris teaches that a set-top box can communicate
directly to a consumer electronic device, but Dubil teaches that a set-top box
must communicate through a remote control.” PO Resp. 40–41. Patent
Owner further argues that a person of ordinary skill in the art “would not
have combined a reference that teaches a set-top box communicating with a
consumer electronic device with a reference that teaches a set-top box not
communicating with a consumer electronic device.” Id. at 41. In a related
argument, Patent Owner asserts that Caris and Dubil teach away from one
another because “Caris teaches a set-top box communicates using IR or RF,
but Dubil specifically does not teach RF for transmissions from the set-top
box.” Id. Patent Owner also contends that Dubil does not “disclose[] a first
device (set-top box) modulating a key code onto a carrier signal” and “Dubil
cannot teach its set-top box modulating a signal or transmitting a modulated
signal to the remote because Dubil does not disclose a remote control that is
capable of demodulating a signal from a set-top box.” Id. at 49. Similarly,
Patent Owner asserts that “Dubil does not describe modulating onto a carrier
signal for any transmission from the set-top box.” PO Sur-reply 15.
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In its Reply, Petitioner states “[t]he Petition does not advocate for
physically combining the STB described in Caris with the STB described in
Dubil.” Pet. Reply 25. Rather, Petitioner argues, a person of ordinary skill
in the art “using the STB described in Caris would have easily implemented
and utilized the same modulation techniques and parameters described in
Dubil to format and modulate a key code onto an IR carrier frequency using
Caris’s IR transmitter or IR blaster.” Id. (citing Pet. 45–48).
We agree with Petitioner’s argument and disagree with Patent
Owner’s argument because Patent Owner improperly relies upon the bodily
incorporation of one reference into another, rather than maintaining focus on
the teachings of the references. “[T]he test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284,
1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA
1981)).
Patent Owner also argues that Caris and Dubil teach away from each
other “in terms of where data is stored and the number and types of
transmissions required to operate a consumer electronic device” because
“Caris teaches the remote control transmits each button press to the set-top
box during operation, but Dubil teaches that the remote control stores the
codeset such that it never needs to transmit to the set-top box during
operation.” PO Resp. 41. We disagree with Patent Owner’s argument
because we find that the distinctions Patent Owner identifies do not rise to
the level of the type of specific criticism or discouragement required to show
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that the references teach away from each other. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (a prior-art reference does not teach away from
the claimed subject matter unless the prior-art reference also criticizes,
discredits, or otherwise discourages the solution claimed).
For the foregoing reasons and based on the complete record, we
determine that Petitioner has demonstrated sufficiently that the proposed
combination of Caris and Dubil teaches or suggests “format the key code for
transmission to the second device,” as recited in claim 1.
d. Limitation [1.4.3]
Claim 1 recites “transmit the formatted key code to the second device
in a key code signal via use of the transmitter.” Petitioner designates this
recitation as limitation [1.4.3]. Pet. 48. For this limitation, Petitioner relies
on Caris’s disclosure of transmission of a key code from its STB to an
“apparatus 114” (the claimed “second device”). Pet. 48 (citing Ex. 1007,
6:53–7:5). As discussed above, Petitioner shows sufficiently that the “IR or
RF transmitter” or “IR or RF blaster” of Caris connected to or integrated
within the STB teaches the recited “transmitter” of claim 1. Id. at 41 (citing
Ex. 1007, 3:65–4:4, 4:47–51, 6:57–58). For limitation [1.4.3], Petitioner
points to the operation of Caris’s STB and look-up table discussed above in
Section III.E.1.b (Limitation [1.4.1]), where the STB receives inputs from
the remote and transmits a corresponding output control code used to control
apparatus 114. Id. at 48 (citing Ex. 1007, 6:53–7:5). Petitioner asserts that
the STB uses a wired or a wireless link with apparatus 114 to transmit the
control codes to apparatus 114. Id. at 49 (citing Ex. 1007, 6:53–7:5, Fig. 2
(showing a dotted line between apparatus 114 and STB 104)). Citing the
testimony of Dr. Russ, Petitioner argues that a person of ordinary skill in the
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art would have understood that the “IR or RF transmitter” or “IR or RF
blaster” described in Caris would be used to wirelessly transmit the
formatted key code. Id. (citing EX1007, 4:47–51, 3:65–4:4; Ex. 1003
¶ 194).
Patent Owner asserts that Caris does not teach limitation [1.4.3]
because “[n]either Caris nor Dubil discloses a first device formatting a key
code or a key code signal” for the reasons Patent Owner discussed with
respect to limitations [1.4] and [1.4.1]. PO Resp. 50 (citing PO Resp.
§§ IV.B.4.b & c). Patent Owner argues, therefore, neither Caris nor Dubil
teaches or suggests a first device transmitting any such formatted key code
to a second device. Id.
We disagree with Patent Owner’s argument because, for the reasons
discussed above in Sections III.E.1.a & b, Petitioner shows sufficiently that
Caris or the combination of Caris and Dubil teaches or suggests limitations
[1.4] and [1.4.1]. Based on the complete record, we determine that
Petitioner has demonstrated sufficiently that Caris teaches “transmit the
formatted key code to the second device in a key code signal via use of the
transmitter,” as recited in claim 1.
e. Limitations [1.4.4] and [1.4.5]
Claim 1 recites “wherein the generated key code comprises a one of a
plurality of key code data stored in a codeset, wherein the one of the
plurality of key code data is selected from the codeset as a function of the
keystroke indicator received from the third device, wherein each of the
plurality of key code data stored in the codeset comprises a series of digital
ones and/or digital zeros,” which Petitioner designates as limitation [1.4.4].
Pet. 49. Claim 1 also recites “wherein the codeset further comprises time
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information that describes how a digital one and/or a digital zero within the
selected one of the plurality of key code data is to be represented in the key
code signal to be transmitted to the second device,” which Petitioner
designates as limitation [1.4.5]. Id. at 52.
For these limitations, Petitioner maps Caris’s database of control
codes as the recited “codeset.” Pet. 49 (citing Ex. 1007, 2:12–20, 3:52–63).
Petitioner also identifies Caris’s “input received from remote 202” as the
recited “keystroke indicator received from the third device.” Id. at 49–50.
In making these mappings, Petitioner relies on the operation of Caris’s look-
up table to teach the recited selection of a key code data from the codeset “as
a function of the keystroke indicator.” Id. at 50. For the recitations
“wherein each of the plurality of key code data stored in the codeset
comprises a series of digital ones and/or digital zeros” and “wherein the
codeset further comprises time information that describes how a digital one
and/or a digital zero within the selected one of the plurality of key code data
is to be represented in the key code signal to be transmitted,” Petitioner
relies on Dubil. Id. at 50–53.
As described in Caris, the database is downloaded from a server and
stored on the STB when the data representing the control codes are
programmed into the look-up table within the STB. Pet. 49 (citing Ex. 1007,
2:12–20, 2:24-39, 3:52–63, 7:2–4). As discussed above with respect to
limitation [1.4.1] (i.e., the limitation reciting “generate a key code using a
keystroke indicator received from a third device”), Petitioner presents two
alternative theories that rely on different identifications of the “keystroke
indicator” in Caris. See Pet. 44–45, 49. As with our analysis of limitation
[1.4.1], we focus on the second of these theories, which we find more
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directly supports Petitioner’s contention that the limitation is taught by
Caris. Specifically, Petitioner identifies the “keystroke indicator” recited in
limitations [1.4.1] and [1.4.4] as the “input received from remote 202”
described in the following disclosure of Caris: “The data gets programmed
into a look-up table 204 that associates an input received from remote 202
with an output as programmed. The output is now the data for the control
command required for control of apparatus 114 via STB 104.” Pet. 45, 50;
Ex. 1007, 7:2–5 (emphasis added). Citing the testimony of Dr. Russ,
Petitioner asserts that a person of ordinary skill in the art would have
understood that an identification of a corresponding output data for the
“control command” from “look-up table 204” teaches the selection of a key
code data from the codeset “as a function of the keystroke indicator received
from the third device,” as recited in limitation [1.4.4]. Id. at 50 (citing
Ex. 1003 ¶ 197).
Addressing the recitation “wherein each of the plurality of key code
data stored in the codeset comprises a series of digital ones and/or digital
zeros,” Petitioner asserts that Dubil’s binary parameters for IR or RF control
codes such as a “bit pattern of the command code” as well as “on/off times
of the [transmitted key code] signal” teach the claimed “digital ones and
digital zeroes.” Pet. 51 (citing Ex. 1008, 2:61–3:8; 4:33–47; 4:60–5:5;
Ex. 1003 ¶ 199). Addressing the recitation “wherein the codeset further
comprises time information that describes how a digital one and/or a digital
zero within the selected one of the plurality of key code data is to be
represented in the key code signal,” Petitioner argues Dubil explains that
parameters including “carrier frequency, duty cycle, protocol type (FSK,
biphase, PWM, etc.), repetition time, on/off times of the signal, bit pattern
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of the command code . . .” would be used to wirelessly transmit a key code
using a carrier signal. Id. at 52 (citing Ex. 1008, 2:61–3:8, 4:33–47, 4:60–
5:5; Ex. 1003 ¶ 202). Citing the testimony of Dr. Russ, Petitioner asserts
that a person of ordinary skill in the art would have understood that
parameters such as “duty cycle,” “repetition time,” and “on/off times of the
signal” would be timing information used to modulate a binary number onto
a carrier frequency. Id. (citing Ex. 1003 ¶¶ 203–205). In the cited
paragraphs of his Declaration, Dr. Russ provides a detailed discussion of
Dubil and other prior art well-known in the art to support his testimony.
Ex. 1003 ¶¶ 203–205 (citing Ex. 1003 §§ VI.A and VI.B). Relying on the
same testimony of Dr. Russ, Petitioner asserts that the timing information
described in Dubil teaches how the STB in Caris would transmit the key
code, as discussed with respect to limitation [1.4.3]. Pet. 53 (citing Ex. 1003
¶¶ 203–205).
Petitioner further contends that a person of ordinary skill in the art
would have been motivated to look to Dubil’s teachings when seeking to
understand how to use Caris’s STB to wirelessly transmit the key code to
apparatus 114, including the details on the key code format (i.e., a bit pattern
of ones and zeros) and how to modulate the key code data onto a carrier
signal for transmission (i.e., modulating the binary numbers of ones and
zeros on to a carrier signal using timing information). Pet. 51 (citing
Ex. 1003 ¶¶ 200, 169; Ex. 1008, 2:61–3:8, 4:33–47, 4:60–5:5), 53 (citing
Ex. 1003 ¶¶ 203–205, 169; Ex. 1008, 2:61–3:8, 4:33–47, 4:60–5:5).
Petitioner asserts that a person of ordinary skill in the art would have
implemented the techniques of Dubil within the Caris’s STB because both
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describe the transmission of the same type of key codes used to control an
electronic consumer device. Id. at 51 (citing Ex. 1003 ¶¶ 200, 169), 53.
Patent Owner disputes the sufficiency of Petitioner’s showing.
Regarding the recitation of a “digital ones and/or digital zeros,” Patent
Owner contends that a person of ordinary skill in the art “would understand
that a digital one and digital zero means that there is a more complex pattern
than simply a one is on and a zero is off.” PO Resp. 52. Although Dr.
Sprenger provides some discussion of the terms in his Declaration, Patent
Owner has not proposed any construction of “digital one” or “digital zero”
that would distinguish such terms from binary code. See id. (“This equating
of on/off times to a digital one and digital zero is incorrect because that
would imply that all binary code is always a digital one and a digital zero,
which is not true.”). We decline to infer what construction Patent Owner
might have proposed adopting in light of Dr. Sprenger’s testimony, and how
such a construction might distinguish from the binary information identified
by Petitioner. On the record before us, we find Petitioner’s identification of
such binary information sufficient to meet the claim’s recitation.
Next, Patent Owner argues that the proposed combination of Caris
and Dubil does not teach that the “key code data stored in the codeset
comprises a series of digital ones and/or digital zeros” because “all of the
XML parameters in Dubil, including the ‘on/off times’ and ‘bit pattern of the
command code,’ are stored at the set-top box as separate XML tags.” PO
Resp. 52 (citing Ex. 2003 ¶¶ 289–290). In a related argument, Patent Owner
asserts that Dubil does not teach that “the codeset comprises time
information” because Dubil’s the XML tags for “duty cycle,” “repetition
time,” and “on/off times of the signal” are all separate from the XML tag for
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the “bit pattern of the command code.” PO Resp. 54. Patent Owner
contends that “Dubil actually teaches away from a codeset that comprises
time information.” Id. In its Reply, Petitioner responds that “[t]he Petition
does not rely on a bodily incorporation of Dubil’s XML tags.” Pet. Reply
19. Petitioner argues that they instead relies on the combination of the
teachings of Caris and Dubil by using Dubil’s teaching of timing factors
describing how to modulate a binary key code onto a carrier signal and
implementing “these timing factors with the key codes (i.e., codeset) stored
in Caris’s STB to perform the wireless transmission of the key codes.” Id.
(citing Pet. 52–53; Ex. 1008, 2:61–3:8, 4:33–47, 4:60–5:5). We agree with
Petitioner’s argument and disagree with Patent Owner’s argument because
Patent Owner improperly relies upon the bodily incorporation of one
reference into another, rather than maintaining focus on the teachings of the
references. See MCM Portfolio, 812 F.3d at 1294.
Lastly, Patent Owner asserts that the combination of Caris and Dubil
does not teach the recited selection of key code data from the codeset
because “[t]he combination of Caris and Dubil would not select key code
data from a codeset at the first device” for the reasons Patent Owner
discussed with respect to limitations [1.4.1], [1.4.2], and [1.4.3]. PO Resp.
51 (citing PO Resp. §§ IV.B.4.c–e). We disagree with Patent Owner’s
argument because, for the reasons discussed above in Sections III.E.1.b–d,
Petitioner shows sufficiently that Caris or the combination of Caris and
Dubil teaches or suggests limitations [1.4.1], [1.4.2], and [1.4.3].
For the foregoing reasons and based on the complete record, we
determine that Petitioner has demonstrated sufficiently that the proposed
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combination of Caris and Dubil teaches or suggests limitations [1.4.4] and
[1.4.5].
f. Rationale for Combining Caris and Dubil
As summarized above, Petitioner relies on Caris for all limitations of
independent claim 1, but relies on the combination of Caris with Dubil for
the “format the key code” limitation. Petitioner also relies on the
combination of Caris with Dubil for limitations [1.4.4] and [1.4.5] reciting
the details of the key code format and modulation of the key code signal.
For example, Petitioner relies on Caris’s teaching of wireless transmission of
key codes by the STB to apparatus 114 using an “IR or RF transmitter” or an
“IR or RF blaster.” Pet. 45–46. Petitioner reasons that a person of ordinary
skill in the art would have understood that such wireless transmission would
be accomplished via “the modulation of the key code onto an infrared carrier
signal,” as acknowledged in the ’325 patent as a well-known wireless
transmission protocol. Id. at 46 (citing Ex. 1001, 1:48–53; Ex. 1003 ¶ 191).
For example, the “BACKGROUND” section of the ’325 patent states that it
was known that “[t]he codesets can differ from each other not only by the bit
patterns assigned to various functions of the associated electronic consumer
device, but also by the timing information that describes how the key codes
should be modulated onto carrier signals to generate key code signals.”
Ex. 1001, 1:48–53 (emphasis added).
Petitioner’s declarant, Dr. Russ, testifies that “[w]hile Caris does not
explicitly describe the operational details behind the wireless transmission of
key codes, a [person of ordinary skill in the art] looking to understand these
formatting or operational details would have known to look to references
such as Dubil.” Ex. 1003 ¶ 191. The combination of this testimony, Caris’s
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disclosure of infrared or radio-frequency transmission, and the ’325 patent’s
acknowledgment that carrier-signal modulation was known provides rational
underpinning that supports Petitioner’s articulated reasoning for combining
the teachings of Caris and Dubil in the manner proposed by Petitioner.
Patent Owner nevertheless advances a number of arguments disputing
the sufficiency of Petitioner’s showing. First, Patent Owner argues that a
person of ordinary skill in the art would not have been motivated to combine
Caris and Dubil because “neither Petitioner nor its expert provides any
reason why a [person of ordinary skill in the art] would have sought to
modulate the signals transmitted in Caris.” PO Resp. 39. As discussed
above, this argument is not persuasive. Although Caris may not be explicit
in suggesting carrier-signal modulation, Dr. Russ provides sufficient basis,
in light of the well-known practice of using carrier-signal modulation for RF
and IR transmission, that a person of skill in the art would have understood
such a suggestion from Caris’s disclosure of such transmission techniques.
Indeed, Dr. Russ devotes a significant section of his Declaration to an
overview of such techniques to support his assertion that “it was well-known
to utilize modulation techniques to wirelessly transmit key codes.” Ex. 1003
¶¶ 80–91.
Patent Owner’s expert, Dr. Sprenger, also acknowledges that carrier-
signal modulation was widely known for transmission of IR and RF signals.
Ex. 2003 ¶ 54 (“All of these methods were widely known and available in
2003”). Nevertheless, Dr. Sprenger emphasizes that “the claimed
modulating onto a carrier signal is only one of several options for
transmitting a signal,” and describes various tradeoffs that a person of skill
in the art might consider when selecting among those several options.
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Ex. 2003 ¶¶ 220–224. But the availability of alternatives does not negate an
otherwise-supported motivation to combine reference teachings. See In re
Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (even the availability of
better alternatives in the prior art “does not mean that an inferior
combination is inapt for obviousness purposes”).
In the context of its analysis of limitations [1.4.1] and [1.4.2], Patent
Owner argues that Petitioner does not establish a sufficient motivation to
combine because a combination of Caris and Dubil different from the
combination relied on by Petitioner—i.e., the combination of Dubil with
Caris’s Figure 1 embodiment, as opposed to the relied-on combination with
Caris’s Figure 2 embodiment—would have been more efficient. PO Resp.
46 (citing Ex. 2003 ¶ 259 (“any combination of Caris and Dubil would use
the first embodiment of Caris and not the second”)), 50 (citing Ex. 2003
¶ 279 (“if a POSITA was combining Caris and Dubil, the combination
would use the first embodiment of Caris (STB transmits back to the remote)
and not the second embodiment (STB transmits to the consumer
appliance)”). We disagree with Patent Owner’s argument because the law
“does not require that a particular combination must be the preferred, or the
most desirable, combination described in the prior art in order to provide
motivation for the current invention.” Novartis Pharm. Corp. v. W.-Ward
Pharm. Int’l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019) (quoting Fulton, 391
F.3d at 1200).
To the extent Patent Owner argues that the existence of the allegedly
“more efficient” combination of Dubil with Caris’s Figure 1 embodiment
teaches away from the Petitioner-proposed combination of Dubil with
Caris’s Figure 2 embodiment (see PO Resp. 46), we disagree with Patent
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Owner because “the ‘mere disclosure of more than one alternative’ does not
amount to teaching away from one of the alternatives where the reference
does not ‘criticize, discredit, or otherwise discourage the solution claimed.’”
SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1320 (Fed. Cir. 2015)
(quoting Fulton, 391 F.3d at 1201). We addressed Patent Owner’s other
“teaching away” arguments above, and for the reasons discussed above, we
disagree with all of them.
For these reasons, we determine that Petitioner articulates sufficient
reason, supported by rational underpinning, for effecting the combination of
teachings from Caris and Dubil that it proposes.
g. Conclusion on Claim 1
In consideration of the foregoing and based on the complete record,
we are persuaded by Petitioner’s arguments and evidence, notwithstanding
Patent Owner’s arguments, addressed above. Having weighed each of the
Graham factors, including the scope and content of the prior art and the
differences between the prior art and the challenged claim, we determine
that Petitioner has demonstrated by a preponderance of the evidence that
claim 1 is unpatentable under 35 U.S.C. § 103(a) over the combination of
Caris and Dubil.
2. Dependent Claim 2
Claim 2 depends from claim 1 and further recites “wherein the
receiver comprises an RF receiver.” Ex. 1001, 11:6–7. Petitioner asserts
that Caris describes that its STB (i.e., “appliance 104” and the claimed “first
device”) is configured to receive IR or RF codes transmitted from the remote
control in response to a user activating a button on the remote control. Pet.
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54 (citing Ex. 1007, 5:46–49, 6:36–38). Citing the testimony of Dr. Russ,
Petitioner argues that a person of ordinary skill in the art would have
understood that for the STB described in Caris to receive and process an “RF
code” transmitted from the remote control, the STB would comprise an RF
receiver. Id. (citing Ex. 1003 ¶ 206).
Patent Owner contends that “Dubil only teaches using infrared
between the set-top box and the remote control” and, therefore, the
combination of Caris and Dubil would not have an RF receiver to receive
input from the remote control. PO Resp. 54. In it Reply, Petitioner argues
that Petitioner relies on Caris for its teaching of an RF receiver. Pet. Reply
20. We disagree with Patent Owner’s argument because Patent Owner
improperly relies upon the bodily incorporation of one reference into
another, rather than maintaining focus on the teachings of the references.
See MCM Portfolio, 812 F.3d at 1294.
Based on the complete record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claim 2 is
unpatentable under 35 U.S.C. § 103(a) over the combination of Caris and
Dubil.
3. Dependent Claims 3–5
Claim 3 depends from claim 1 and further recites “wherein the
transmitter comprises an IR transmitter.” Ex. 1001, 11:8–9. Petitioner
asserts that Caris teaches the limitation recited in claim 3 because Caris
teaches that the STB is equipped with an “IR . . . transmitter in the front
bezel.” Pet. 54 (citing Ex. 1007, 4:47–51). Petitioner makes a sufficient
showing.
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Claim 4 depends from claim 1 and further recites “wherein the
formatted key code is transmitted from the first device to the second device
via a wired connection between the first device and the second device.”
Ex. 1001, 11:10–13. Petitioner argues that Caris teaches the limitation
recited in claim 4 because Caris teaches that the STB may use a wired link
with apparatus 114 to transmit the control codes. Pet. 54–55 (citing
Ex. 1007, 6:53–7:5; Ex. 1003 ¶ 208). Petitioner shows sufficiently that
Caris teaches the limitation recited in claim 4.
Claim 5 depends from claim 1 and further recites “wherein the
formatted key code is transmitted from the first device to the second device
via a wireless connection between the first device and the second device.”
Ex. 1001, 11:14–17. Petitioner argues that Caris teaches the limitation
recited in claim 5 because Caris teaches that the STB may use a wireless link
with apparatus 114 to transmit the control codes. Pet. 55 (citing Ex. 1007,
6:53–7:5; Ex. 1003 ¶ 209). Petitioner makes a sufficient showing.
Patent Owner does not respond separately to Petitioner’s challenge to
claims 3–5 beyond Patent Owner’s arguments advanced with respect to
claim 1 discussed above. See PO Resp. 55–56.
Based on the complete record presented, we determine that Petitioner
has demonstrated by a preponderance of the evidence that claims 3, 4, and 5
are unpatentable under 35 U.S.C. § 103(a) over the combination of Caris and
Dubil.
F. Obviousness over Rye and Skerlos
Petitioner asserts that claims 1, 2, 3, 5, and 7 are unpatentable under
35 U.S.C. § 103(a) over the combination of Rye and Skerlos. Pet. 10–35.
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1. Claim 1
Petitioner challenges independent claim 1 as unpatentable under
35 U.S.C. § 103(a) over Rye and Skerlos. Pet. 13–32. In addressing the
recited limitations, Petitioner draws a correspondence between (1) the
recited “first device” and Rye’s transceiver 30 (id. at 13–14 (citing Ex. 1005,
Abstr., ¶ 23, Figs. 2, 3)); (2) the recited “second device” and Rye’s selected
audiovisual component (id. at 14 (citing Ex. 1005, Abstr., ¶ 23, Figs. 2, 3));
and (3) the recited “third device” and Rye’s remote control unit 18 (id. at
19–20 (citing Ex. 1005 ¶ 21, Figs. 2, 3)). Petitioner further draws a
correspondence between (4) the recited “receiver” of the “first device” and
Rye’s RF receiver 34 within Rye’s transceiver 30 (id. at 15 (citing Ex. 1005
¶ 23, Fig. 3)); (5) the recited “transmitter” of the “first device” and Rye’s IR
emitter 48 (id. at 15–16 (citing Ex. 1005 ¶¶ 23, 25, Fig. 3)); (6) the recited
“processing device coupled to the receiver and the transmitter” and Rye’s
main processor 38 and IR processor 42 (id. at 16–18 (citing Ex. 1005 ¶¶ 23–
25, Fig. 3)); and (7) the recited “memory storing instructions executable by
the processing device” and Rye’s address memory 40, memory for code
lookup table 46, and code library memory 44 (id. at 18–19 (citing Ex. 1005
¶¶ 23–25, Fig. 3)). In addition, Petitioner maps the recited “keystroke
indicator received from a third device” to Rye’s radio-frequency binary
coded signal transmitted from antenna 24 of remote control unit 18 to
transceiver 30 (id. at 20–21 (citing Ex. 1005 ¶¶ 21–23, Fig. 2)) and maps the
recited “key code” to a control code identified by Rye’s transceiver 30 (id. at
21 (citing Ex. 1005 ¶¶ 23, 24, 27–31, 36–38, Fig. 3)). In making these
correspondences or mappings, Petitioner relies generally on Rye’s described
functionality to meet the limitations of claim 1 requiring the recited
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“processing device” to “generate a key code using a keystroke indicator
received from a third device” and “transmit the . . . key code to the second
device in a key code signal.” Id. at 21 (citing Ex. 1005 ¶¶ 23, 24, 27–31,
36–38, Fig. 3), 27 (citing Ex. 1005 ¶¶ 25, 27).
For the limitation requiring the recited “processing device” to “format
the key code for transmission to the second device,” Petitioner relies on the
combination of Rye with Skerlos, arguing that the proposed combination of
Rye with Skerlos teaches “format[ting] the key code for transmission” by
describing “formatting of a key code [for transmission] by modulating the
key code onto a carrier signal.” Id. at 22–25.
Addressing limitation [1.4.4] reciting “wherein the generated key code
comprises a one of a plurality of key code data stored in a codeset, wherein
the one of the plurality of key code data is selected from the codeset as a
function of the keystroke indicator received from the third device, wherein
each of the plurality of key code data stored in the codeset comprises a series
of digital ones and/or digital zeros,” Petitioner maps Rye’s code library 44 to
the recited “codeset.” Pet. 27 (citing Ex. 1005 ¶¶ 24, 38). Petitioner asserts
that Rye describes that the key codes stored in code library 44 are used to
generate “binary coded infrared (IR) signals.” Id. at 28 (citing Ex. 1005
¶¶ 15, 16, 23, 25, 27). Petitioner contends that a person of ordinary skill in
the art would have understood that these “binary” signals would include a
binary number representing a “digital one” and “digital zero.” Id. (citing
Ex. 1003 ¶ 146).
Addressing limitation [1.4.5] reciting “wherein the codeset further
comprises time information that describes how a digital one and/or a digital
zero within the selected one of the plurality of key code data is to be
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represented in the key code signal to be transmitted to the second device,”
Petitioner acknowledges that “Rye does not explicitly describe the
operational details explaining how the binary numbers are modulated onto
an IR carrier signal to produce these signals.” Pet. 30 (Ex. 1005 ¶ 23).
Petitioner thus relies on Skerlos for its disclosure of “describes timing
factors related to key code transmission and how binary key codes are
modulated onto carrier signals.” Id. (citing Ex. 1006, 2:68–3:8, 6:12–14,
6:27–30). Petitioner contends that Skerlos describes using the timing
information to perform the modulation of the binary code using the pulse
code modulated (PCM) technique. Id. at 31 (citing Ex. 1006, 3:20-36,
Figs. 1A–1C).
Patent Owner asserts that Petitioner does not show sufficiently that the
combination of Rye with Skerlos teaches that the codeset comprises time
information. PO Resp. 33. We agree with Patent Owner’s argument. As
discussed above, Petitioner repeatedly states that “binary coded infrared (IR)
signals” are generated from the key code stored in code library 44. See Pet.
28 (“the key codes stored in code library 44 are used to generate ‘binary
coded infrared (IR) signals’” (emphasis added)), 30 (“the key codes
generated at the transceiver include binary numbers and generate ‘binary
coded infrared (IR) signals’” (emphasis added); “the key codes include
binary numbers that are used to generate “binary coded infrared (IR)
signals” (emphasis added)). And it is those “binary coded infrared (IR)
signals” Petitioner contends include digital ones and zeros. See Pet. 28.
Petitioner does not argue that the “binary coded infrared (IR) signals” are
stored in code library 44 (i.e., the claimed “codeset”). Thus, even if
Skerlos’s PCM modulation technique is used to provide time information for
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Rye’s “binary coded infrared (IR) signals,” it does not show sufficiently how
Rye’s code library 44 (the claimed “codeset”) comprises time information,
as required by the claim. Thus, we agree with Patent Owner that timing
information in the transmitted signal disclosed in Skerlos does not
necessarily teach what the codeset comprises on Rye’s set-top box. PO
Resp. 33. In addition, Patent Owner argues that the BPAI made the same
distinction during prosecution of a predecessor application, and we agree
with that distinction. Id. (citing Ex. 2006, 256).
Accordingly, we determine that Petitioner does not show by a
preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C.
§ 103(a) over the combination of Rye and Skerlos.
2. Dependent Claims 2, 3, 5, and 7
Claims 2, 3, 5, and 7 each depend directly from claim 1. Petitioner’s
arguments and evidence presented with respect to these dependent claims
only address the additionally recited limitation of the claims, and, therefore,
do not remedy the deficiencies in Petitioner’s analysis of independent
claim 1 discussed above. Therefore, for the same reasons discussed above
with respect to claim 1, Petitioner has not shown by a preponderance of the
evidence that claims 2, 3, 5, and 7 are unpatentable under 35 U.S.C. § 103(a)
over the combination of Rye and Skerlos.

IV. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has met its
burden of proof, by a preponderance of the evidence, in showing that
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claims 1–5 of the ’325 patent are unpatentable.7 For the reasons discussed
above, Petitioner has not demonstrated, by a preponderance of the evidence,
claim 7 of the ’325 patent is unpatentable. The chart below summarizes our
conclusions.
Claims
35
U.S.C.
§
References/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–5 103(a) Caris, Dubil 1–5
1, 2, 3, 5, 7 103(a) Rye, Skerlos 1, 2, 3, 5, 7
Overall
Outcome 1–5 7

V. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–5 of the ’325 patent are determined to be
unpatentable;
FURTHER ORDERED that claim 7 of the ’325 patent is not
determined to be unpatentable; and

7 Should Patent Owner wish to pursue amendment of claims 1–5 in a reissue
or reexamination proceeding subsequent to the issuance of this Decision, we
draw Patent Owner’s attention to the April 2019 Notice Regarding Options
for Amendments by Patent Owner Through Reissue or Reexamination
During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22,
2019). If Patent Owner chooses to file a reissue application or a request for
reexamination of the challenged patent, we remind Patent Owner of its
continuing obligation to notify the Board of any such related matters in
updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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FURTHER ORDERED that, because this is a Final Written Decision,
a party to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For 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

For PATENT OWNER:
Benjamin Pleune
Ryan Koppelman
Thomas Davison
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