Universal Electronics, Inc.

Patent Trials and Appeals Board

Nov 10, 2020

IPR2020-00952 (P.T.A.B. Nov. 10, 2020)

Trials@uspto.gov Paper 11
571-272-7822 Entered: November 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ROKU, INC.,
Petitioner,
v.
UNIVERSAL ELECTRONICS, INC.,
Patent Owner.

IPR2020-00952
Patent 9,716,853 B2

Before PATRICK M. BOUCHER, MINN CHUNG, and
SHARON FENICK, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)
Denying Motion for Joinder
35 U.S.C. § 315(c); 37 C.F.R. § 42.122
I. INTRODUCTION
Roku, Inc. (“Petitioner”) filed a Petition requesting inter partes
review of claims 1, 2, 6, and 8 (“the challenged claims”) of U.S. Patent
No. 9,716,853 B2 (Ex. 1001, “the ’853 patent”). Paper 1 (“Pet.”). The
Petition involves the same parties and the same patent at issue in an
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instituted trial proceeding in IPR2019-01615 (“the related IPR”).
Concurrent with its Petition, Petitioner also filed a Motion for Joinder with
IPR2019-01615. Paper 2 (“Mot.”). Universal Electronics, Inc. (“Patent
Owner”) filed both a Preliminary Response and an Opposition to Petitioner’s
Joinder Motion. Papers 10 (“Prelim. Resp.”), 6 (“Opp.”). With our
authorization, Petitioner filed a Reply to Patent Owner’s Opposition. Paper
9 (“Reply”).
For the reasons set forth below, we deny both the Petition and the
Motion for Joinder.
II. BACKGROUND
A. Overview of the ’853 Patent
The ’853 patent relates to a device that receives “a request from a
controlling device, such as a remote control, smart phone, or the like” to
“have one or more target devices perform one or more functional
operations.” Ex. 1001, code (57). The device “responds to the request by
applying the optimum methodology to propagate one or more commands” to
the target device(s) to perform the functional operation(s). Id.
Figure 1 of the ’853 patent, reproduced below, illustrates an
exemplary system in which a universal control engine (UCE) according to
the invention is used to issue commands to control various controllable
appliances. Id. at 3:39–41.
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In Figure 1, controllable appliances include television 106, cable set
top box combined with digital video recorder 110, DVD player 108, and AV
receiver 120. Id. at 3:41–44. Appliance commands are issued by UCE 100
in response to infrared (“IR”) request signals 116 received from remote
control device 102 or radio frequency (“RF”) request signals 118 received
from app 124 resident on smart device 104. Id. at 3:52–56. Transmission of
commands from UCE 100 to the controllable appliances may take the form
of wireless IR signals 114 or Consumer Electronic Control (“CEC”)
commands issued over wired HDMI interface 112 if available. Id. at 2:38–
45, 3:58–4:4.
The ’853 patent describes that the method, protocol, or medium for
issuing commands to controllable appliances may vary by appliance and/or
by function to be performed. Id. at 6:62–64, 7:5–7. “[I]n some instances a
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particular appliance may support receipt of an operational command via
more than one path,” such as via a CEC command or via an IR command.
Id. at 7:10–12. A UCE may use a matrix including data cells, each
corresponding to a specific command and a specific appliance, with the data
content of the cell including “identification of a form of
command/transmission to be used and a pointer to the required data value
and formatting information for the specific command.” Id. at 7:26–29,
Fig. 7. The matrix 700 may contain a null entry if “a particular function is
not available on or not supported by a specific appliance.” Id. at 7:46–49.
“In certain embodiments one or more secondary command matrices . . . may
also be provisioned, allowing for the use of alternate command methods in
the event it is determined by the UCE programming that a preferred
command was unsuccessful.” Id. at 7:42–46.
Figure 13 of the ’853 patent, reproduced below, illustrates an
exemplary series of steps performed by a UCE in issuing a function
command to an appliance. Id. at 3:29–31, 11:40–47.
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As shown in Figure 13, a command request is received (1300) and a
corresponding data element, if one exists, is retrieved from a preferred
command matrix and transmitted to the appliance (1302, 1304, 1306). Id. at
11:40–57, 12:4–10. In certain cases, when a determination that the
communication interface and protocol used provides for a confirmation of
successful transmission, if that confirmation is not received (1308, 1310)
then if an alternate method of issuing the command is available, the data
element from an alternate command matrix is retrieved and transmitted
(1312, 1316, 1306). Id. at 12:10–16, 12:21–35.
B. Challenged Claims
Of the challenged claims, claim 1 is the sole independent claim.
Challenged claims 2 and 8 depend from claim 1, and challenged claim 6
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depends from claim 2. Claim 1 is reproduced below with bracketed
notations, corresponding to notations in the Petition, added for reference.
1. [1.P] A universal control engine, comprising:
[1.1] a processing device; and
a memory device having stored thereon instructions
executable by the processing device, the
instructions, when executed by the processing
device, causing the universal control engine
[1.2] to respond to a detected presence of an
intended target appliance within a logical
topography of controllable appliances which
includes the universal control engine [1.3] by
using an identity associated with the intended
target appliance to create a listing comprised of
at least a first communication method and a
second communication method different than
the first communication method [1.4] for use in
controlling each of at least a first functional
operation and a second functional operation of
the intended target appliance [1.5] and to
respond to a received request from a controlling
device intended to cause the intended target
appliance to perform a one of the first and
second functional operations [1.6] by causing a
one of the first and second communication
methods in the listing of communication
methods that has been associated with the
requested one of the first and second functional
operations to be used to transmit to the intended
target appliance a command for controlling the
requested one of the first and second functional
operations of the intended target appliance.
Ex. 1001, 14:49–15:7.

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C. Evidence Relied Upon
Reference Date Exhibit
Chardon et al.
(“Chardon”) US 2012/0249890 A1 Oct. 4, 2012 1005
Stecyk US 2009/0254500 A1 Oct. 8, 2009 1006
HDMI Licensing, LLC, High-Definition
Multimedia Interface, Specification
Version 1.3a (November 10, 2006)
(“HDMI 1.3a”)
2006 1010
Petitioner also relies upon the Declaration of Dr. Samuel H. Russ.
(Ex. 1003).
D. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:

Claims Challenged 35 U.S.C. §1 Reference(s)/Basis
1, 2, 6, and 8 103(a) Chardon, HDMI 1.3a, and Stecyk
E. Real Parties in Interest
The parties identify only themselves as real parties in interest. Pet.
73; Paper 5, 1.
F. Related Matters
Both parties identify Universal Electronics, Inc. v. Roku, Inc.,
No. 8:18-cv-01580 (C.D. Cal.) (“the related litigation”), as involving the
’853 patent. Pet. 73; Paper 4, 1.

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), amended 35 U.S.C. § 103. Because the
application from which the ’853 patent claims priority through a chain of
continuation applications to an application filed before March 16, 2013, the
effective date of the relevant amendment, the pre-AIA version of § 103
applies. Ex. 1001, code (63).
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The parties additionally identify the following proceedings as
involving the ’853 patent: (1) Universal Electronics Inc. v. Funai Electric
Co., No. 8:20-cv-0700 (C.D. Cal.); (2) Universal Electronics Inc. v. Funai
Electric Co., No. 8:20-cv-0701 (C.D. Cal.); (3) Universal Electronics Inc. v.
TCL Electronics Holdings Ltd., No. 8:20-cv-0704 (C.D. Cal.); (4) Universal
Electronics Inc. v. TCL Electronics Holdings Ltd., No. 8:20-cv-3328 (C.D.
Cal.); (5) Universal Electronics Inc. v. Hisense Co., No. 8:20-cv-0696 (C.D.
Cal.); and (6) Certain Electronic Devices, Including Streaming Players,
Televisions, Set Top Boxes, Remote Controllers, and Components Thereof,
Inv. No. 337-3450 (ITC). Pet. 73; Paper 5, 1.
The ’853 patent is one of several patents owned by Patent Owner that
are challenged by Petitioner in various petitions for inter partes review,
including in IPR2019-01595, IPR2019-01608, IPR2019-01612, IPR2019-
01613, IPR2019-01614, IPR2019-01615, IPR2019-01619, IPR2019-01620,
IPR2019-01621, IPR2020-00951, IPR2020-00953, and IPR2020-01012.
See Paper 5, 1–2.
The parties also note that the following application claims the benefit
of the filing date of the ’853 patent: U.S. Patent Appl. No. 15/626,357 (now
U.S. Patent No. 9,942,509). Pet. 73; Paper 4, 2.
III. ANALYSIS
“An inter partes review may not be instituted if the petition requesting
the proceeding is filed more than 1 year after the date on which the
petitioner, real party in interest, or privy of the petitioner is served with a
complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). The
parties agree that the Petition was filed more than one year after the date on
which Petitioner was served in the related litigation with a complaint
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alleging infringement of the ’853 patent. Mot. 3 (Petitioner acknowledging
that it “is now past the one-year statutory bar set forth in 35 U.S.C. § 315(b)
to file an IPR against those claims”); Opp. 1 (Patent Owner asserting that
Petitioner “seeks to flip the IPR process on its head by asking the Board to
review a brand new IPR petition that has been time-barred for over eight
months”).
An exception exists to the statutory time bar: “The time limitation set
forth in the preceding sentence [quoted above] shall not apply to a request
for joinder under [35 U.S.C. § 315(c)].” 35 U.S.C. § 315(b). Petitioner
seeks to apply that exception to join the related IPR and thereby to add
issues to the related IPR. Petitioner argues, “[u]nder § 315(c), the Board has
the discretion to allow a petitioner to be joined to a proceeding in which it is
already a party. Section 315(c) also ‘provides discretion to allow joinder of
new issues into an existing proceeding.’” Mot. 5 (quoting Proppant Express
Investments v. Oren Techs., LLC, IPR2018-00914, Paper 38 at 4 (PTAB
Mar. 13, 2019)). In arguing that Proppant controls and allows joinder of
issues, Petitioner highlights the Supreme Court’s determination that the
Federal Circuit lacks appellate jurisdiction to review issues that are “closely
tied to the application and interpretation of statutes” related to an IPR
institution decision. Mot. 5–7; Thryv, Inc. v. Click-to-Call Tech, LP, 140 S.
Ct. 1367, 1373 (2020).
Petitioner’s argument is nevertheless foreclosed by the Federal
Circuit’s recent decision in Facebook, Inc. v. Windy City Innovations, LLC,
973 F.3d 1321 (Fed. Cir. 2020). In that decision, the Federal Circuit
expressly considered the impact of Thryv, determining that the Board’s
joinder decisions are “unlike” the challenges it is precluded from reviewing
and “more like” those that it may review. Windy City, 973 F.3d at 1332.
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“Accordingly,” the Federal Circuit concluded, it “ha[s] jurisdiction to review
the Board’s joinder decisions.” Id. And after reviewing such a joinder
decision, the court further concluded that 35 U.S.C. § 315(c) “does not
authorize same-party joinder, and does not authorize the joinder of new
issues.” Id. at 1333–38.
In accordance with the Federal Circuit’s decision, we deny
Petitioner’s Motion for Joinder. Consequently, we conclude that the Petition
is time-barred and that no exception applies under the facts before us. We
therefore deny the Petition.
IV. ORDER
In consideration of the foregoing, it is
ORDERED that the Petition is denied and no trial is instituted; and
FURTHER ORDERED that Petitioner’s Motion for Joinder is denied.

cu
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PETITIONER:

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

PATENT OWNER:

Benjamin S. Pleune
Ryan W. Koppelman
Thomas W. Davison
James H. Abe
Caleb J. Bean
Derek S. Neilson
Nicholas T. Tsui
ALSTON & BIRD LLP
ben.pleune@alston.com
ryan.koppelman@alston.com
tom.davison@alston.com
james.abe@alston.com
caleb.bean@alston.com
derek.neilson@alston.com
nick.tsui@alston.com

James J. Lukas, Jr
Gary Jarosik
Benjamin P. Gilford
GREENBERG TRAURIG, LLP
lukasj@gtlaw.com
jarosikg@gtlaw.com
gilfordb@gtlaw.com