Universal Remote Control, Inc.v.Universal Electronics, Inc.

Patent Trial and Appeal Board

Aug 26, 2013

07990862 (P.T.A.B. Aug. 26, 2013)

Trials@uspto.gov Paper No. 9
571-272-7822 Date Entered: August 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIVERSAL REMOTE CONTROL, INC.
Petitioner

v.

UNIVERSAL ELECTRONICS, INC.
Patent Owner
____________

Case IPR2013-00168
Patent 5,414,426
____________

Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and SCOTT R.
BOALICK, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION
Denying Inter Partes Review
37 C.F.R. § 42.108

IPR2013-00168
Patent 5,414,426

2

I. BACKGROUND
Universal Remote Control, Inc. (Petitioner) has filed (Feb. 26, 2013) a
petition requesting inter partes review of claims 1-5, 10, and 13 of US
Patent 5,414,426 (“the '426 patent”) under 35 U.S.C. §§ 311 et seq. Paper No. 2
(“Pet.”). Universal Electronics, Inc. (Patent Owner) submitted a preliminary
response under 37 C.F.R. § 42.107(b) on May 28, 2013. Paper No. 7 (“Prelim.
Resp.”). The Board, acting on behalf of the Director, has jurisdiction under 35
U.S.C. § 314.
Section 315 of Title 35 of the United States Code provides in pertinent part:
(b) PATENT OWNER’S ACTION.—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. The time limitation set forth in the
preceding sentence shall not apply to a request for joinder under
subsection (c).

For the reasons that follow, the Board determines that the petition was not
filed timely within the statutory period of 35 U.S.C. § 315(b) and, therefore, the
Board declines to institute an inter partes review.

A. Related Proceedings
The '426 patent is involved in litigation styled Universal Electronics Inc., v.
Universal Remote Control, Inc., Case No. SACV 12-00329 AG (JPRx) (C.D. Cal.),
filed on March 2, 2012. Pet. 1 (“the related litigation”). Petitioner has filed
petitions for inter partes review against two other patents involved in the litigation:
US 6,587,067 C1 (IPR2013-00127); and US 5,614,906 (IPR2013-00152). Id.

IPR2013-00168
Patent 5,414,426

3

B. Earlier Proceeding
The '426 patent was included in a complaint for patent infringement filed
November 15, 2000, styled Universal Electronics, Inc. v. Universal Remote
Control, Inc., Case No. SAVC 00-1125 AHS (EEx)(C.D. Cal.). Pet. 3.
Patent Owner served Petitioner with the complaint on March 21, 2001.
Prelim. Resp. 2; Ex. 2001 at 2 (docket # 10).
Patent Owner filed a first amended complaint (Ex. 1019) on
September 27, 2002, which removed all references to the '426 patent. Pet. 4.
In an order dated October 18, 2002, the court ordered that “Plaintiff’s causes
of action for patent infringement, based on U.S. Patent No. 5,414,426 against
Defendant Universal Remote Control, Inc., are hereby dismissed with prejudice.”
Pet 4; Ex. 1020 at 2.
The ‘426 patent was included in the complaint for patent infringement filed
on March 2, 2012, in the related litigation.
That case is ongoing.

II. ANALYSIS
Petitioner was served with a complaint alleging infringement of the '426
patent on two occasions. The first complaint, in connection with a first case styled
Universal Electronics, Inc. v. Universal Remote Control, Inc., Case No. SAVC 00-
1125 AHS (EEx)(C.D. Cal.), was served on Petitioner on March 21, 2001. The
second complaint, in connection with a second case styled Universal Electronics
Inc., v. Universal Remote Control, Inc., Case No. SACV 12-00329 AG (JPRx)
(C.D. Cal.), was served on Petitioner less than 12 months prior to the filing date of
the Petition. Pet. 3.
IPR2013-00168
Patent 5,414,426

4

Petitioner raises two issues with respect to 35 U.S.C. § 315(b). The first
issue is whether the later served complaint nullifies the effect of the first served
complaint for purposes of 35 U.S.C. § 315(b). If the answer to the first inquiry is
no, the second issue raised by the Petitioner is whether the service of the first
complaint bars it from inter partes review.

Service of a second complaint does not nullify the effect of a first served
complaint for purposes of 35 U.S.C. 315(b)
Petitioner submits “[t]here is nothing in the text of section 315(b) that
addresses the subject of multiple lawsuits involving the same patent or that
requires that the one-year grace period be applied to the filing of the first of such
multiple lawsuits.” Pet. 7. We agree that the plain language of the statute does not
address the subject of multiple lawsuits involving the same patent. We disagree,
however, that the one-year grace period applies only to the last of a chain of
multiple lawsuits or that the filing of a later lawsuit renders the service of a
complaint in an earlier lawsuit to be a nullity as Petitioner argues. The plain
language of the statute does not include such a restriction.
Further, Petitioner cites the Board's Decision on Service under 35 U.S.C.
§ 315(b) in Motorola Mobility LLC v. Michael Arnouse, IPR2013-00010, Paper 20
(Ex. 1024) as support for their position that “a primary reason for the one-year
grace period was to provide defendants sufficient time to fully analyze the patent
claims, but not to create an open-ended process.” Pet. 5. This decision is
inapposite. First, the discussion in that case about an “open-ended process”
concerned a hypothetical petitioner who chose to waive service of a summons (Ex.
1024 at 6). Waiver of service is not at issue here.
IPR2013-00168
Patent 5,414,426

5

But, more importantly, Motorola Mobility concerned a dispute about the
meaning of the word “service” in § 315(b). See Ex. 1024 at 2-5. Motorola
Mobility thus addressed an ambiguity in the text of § 315(b). Petitioner in this case
does not allege, let alone show, there is any ambiguity in the text of § 315(b) as it
applies to Petitioner.
The Supreme Court has “repeatedly recognized” that:
“[w]hen . . . the terms of a statute [are] unambiguous, judicial inquiry
is complete, except ‘in “rare and exceptional circumstances.” ’ ”
Rubin v. United States, 449 U.S. 424, 430, 101 S.Ct. 698, 701, 66
L.Ed.2d 633 (1981) (citations omitted). In the absence of a “clearly
expressed legislative intention to the contrary,” the language of the
statute itself “must ordinarily be regarded as conclusive.” Consumer
Product Safety Comm'n v. GTE Sylvania, Inc., 447 U.S. 102, 108, 100
S.Ct. 2051, 2056, 64 L.Ed.2d 766 (1980).

United States v. James, 478 U.S. 597, 606 (1986). “It is well settled law that the
plain and unambiguous meaning of the words used by Congress prevails in the
absence of a clearly expressed legislative intent to the contrary.” Hoechst
Aktiengesellschaft v. Quigg, 917 F.2d 522, 526 (Fed. Cir. 1990). When there is no
ambiguity in the words of the statute, “we turn to the legislative history to see if
Congress meant something other than what it said statutorily.” Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1426 (Fed. Cir. 1988).
Petitioner has not pointed to any particular legislative history associated with
35 U.S.C. § 315(b) which clearly expresses that the filing of a later lawsuit renders
the service of a complaint in an earlier lawsuit to be a nullity. We conclude that
§ 315(b) means that an inter partes review may not be instituted if the petition
requesting the proceeding is filed more than one year after the date on which the
petitioner is served with a complaint alleging infringement of the patent. Because
IPR2013-00168
Patent 5,414,426

6

Petitioner was served with a complaint alleging infringement of the patent on
March 21, 2001, inter partes review cannot be instituted.

Service of the first complaint has not been shown to be exceptional under
35 U.S.C. § 315(b)
Petitioner argues that it is not barred from inter partes review because the
earlier litigation was never effectively brought as to the '426 patent. Pet. 6.
Petitioner cites the Board’s decision instituting inter partes review in IPR2012-
0004, Macauto U.S.A. v. BOS GmbH & KG (Ex. 1022). However, as pointed out
by Patent Owner, in Macauto the infringement suit against the petitioner
voluntarily was dismissed without prejudice, under Fed. R. Civ. P. 41(a), pursuant
to a joint stipulation. The Board noted that the Federal Circuit consistently has
interpreted the effect of such dismissals as leaving the parties as though the action
had never been brought. Ex. 1022 at 15-16, quoting from Graves v. Principi, 294
F.3d 1350, 1356 (Fed. Cir. 2002) and Bonneville Associates, Ltd. Partnership v.
Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999).
In contrast, and in an order dated October 18, 2002 regarding the earlier
litigation, the United States District Court for the Central District of California
ordered that “Plaintiff’s causes of action for patent infringement, based on U.S.
Patent No. 5,414,426 against Defendant Universal Remote Control, Inc., are
hereby dismissed with prejudice.” Pet 4; Ex. 1020 at 2 (emphasis added).
Petitioner does not provide an explanation as to why the dismissal with prejudice
should be treated as though the action had never been brought, e.g., why the
dismissal with prejudice should be treated as a dismissal without prejudice. Cf.
Ford-Clifton v. Dept. of Veterans Affairs, 661 F.3d 655, 660 (Fed. Cir. 2011) (a
IPR2013-00168
Patent 5,414,426

7

dismissal with prejudice is an adjudication on the merits for purposes of res
judicata).
In sum, Petitioner has failed to show that we should treat the dismissal with
prejudice the same as a dismissal without prejudice.

III. CONCLUSION
We have considered Petitioner’s arguments, but Petitioner has not identified
any authority which requires that the Board deviate from the plain language of 35
U.S.C. § 315(b). Nor has Petitioner identified any authority which establishes that
the Board has the discretion to forgive the time limitation set forth in the statute.
We are not persuaded that the petition was filed timely within the statutory period
of 35 U.S.C. § 315(b) and, therefore, the Board declines to institute an inter partes
review of U.S. Patent 5,414,426.

IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that the petition is denied as to all challenged claims and no trial
is instituted.

IPR2013-00168
Patent 5,414,426

8

For Petitioner:

Timothy Bianchi
tbianchi@slwip.com

Thomas Reynolds
treynolds@slwip.com

For Patent Owner:

Michael A. Nicodema
nicodemam@gtlaw.com

Gary R. Jarosik
jarosikg@gtlaw.com

Eric J. Maiers
maiersj@gtlaw.com