Universal Remote Control Inc.v.Universal Electronics Inc.

Patent Trial and Appeal Board

Dec 15, 2015

08046105 (P.T.A.B. Dec. 15, 2015)

Trials@uspto.gov Paper 49
571-272-7822 Date Entered: December 15, 2015

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 IPR2014-01106
Patent 5,255,313
____________

Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. BACKGROUND
Petitioner, Universal Remote Control, Inc., filed a request for inter
partes review of claims 1, 2, and 20 of U.S. Patent No. 5,255,313 (Ex. 1001,
“the ’313 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition” or
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“Pet.”). The Board instituted an inter partes review of claims 1, 2, and 20
on an asserted ground of unpatentability for obviousness. Paper 9 (“Dec. on
Inst.”).
Subsequent to institution, Patent Owner, Universal Electronics Inc.,
filed a Patent Owner Response in both unredacted (confidential) and revised
redacted forms (Papers 14 and 45 (“PO Resp.”)), along with a Motion to
Seal (Paper 15). Petitioner filed a Reply in both unredacted (confidential)
and revised redacted forms (Papers 20 and 46; (“Pet. Reply”)), along with a
Motion to Seal (Paper 22).
Patent Owner filed a Motion to Exclude (Paper 29; “PO Mot. to
Exclude”). Petitioner filed an Opposition to the Motion to Exclude (Paper
33; “Pet. Exclude Opp.”), and Patent Owner filed a Reply (Paper 36; “PO
Exclude Reply”). Petitioner filed a Motion to Exclude (Paper 28; “Pet. Mot.
to Exclude”). Patent Owner filed an Opposition to the Motion to Exclude
(Paper 35; “PO Exclude Opp.”), and Petitioner filed a Reply (Paper 37, “Pet.
Exclude Reply”).
Patent Owner filed a Motion for Observations on Cross-Examination
(Paper 30) and Petitioner filed a Response to the Observations (Paper 34).
An oral hearing was held on August 19, 2015. A transcript of the
hearing is included in the record (Paper 48; “Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1, 2, and 20 of the ’313 patent
are unpatentable.

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A. Related Proceedings
According to Petitioner, the ’313 patent is involved in the following
lawsuit: Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
SACV 13-00984 AG (JPRx) (C.D. Cal.). Pet. 1.

B. The ’313 Patent
The ’313 patent relates to a remote control that includes input
circuitry with a set of keys or pushbuttons for inputting commands to the
remote control, infrared signal output circuitry for supplying an infrared
signal to a controlled device, and a central processing unit (CPU) coupled to
the input circuitry. Ex. 1001, Abstract, Fig. 8 (operating circuitry), Fig. 9B
(keyboard circuit). Memory is coupled to the CPU, which stores code data
for generating infrared light to control an apparatus. Ex. 1001, Abstract.
Memory may be updated from outside the remote control through data
coupling circuitry and structure coupled to the CPU. Id.

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Figure 20 of the ’313 patent is reproduced below.

Figure 20 is a fragmentary perspective view of a connector having
conversion circuitry and a battery case cover by which data can be input into
the RAM of the operating circuitry of a remote control device. Ex. 1001,
col. 4, ll. 22–27. Signal coupling and converting assembly 206 includes
connector assembly 207, cable 208, and cover plate 210 for battery
compartment 45 (Fig. 7). Cover plate 210 has three pins 212, 214, and 216
on its underside, which are positioned to connect with three serial ports 1, 2,
and 3 (Fig. 7) of the control device. Id. at col. 19, ll. 39–45. Pins 212, 214,
and 216 are connected by three wire conductors 224, 226, and 228 in cable
208 to connector assembly 207, which contains conversion circuitry 230.
Conversion circuitry 230 (Figs. 21, 22) enables using some of the nine
sockets 250 of connector assembly 207 for communication with serial ports
1, 2, and 3 via pins 212, 214, and 216. Id. at col. 19, ll. 45–55.

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C. Illustrative Claim
Each of claims 1, 2, and 20 is independent. Claim 1, reproduced
below, is illustrative.
1. A universal remote control system including a
computer having a memory, code data for creating appropriate
infrared (IR) lamp driver instructions for causing an infrared
signal generator to emit infrared signals which will cause
specific functions to occur in a specific controlled device, for
operating a variety of devices to be controlled, stored in said
memory of said computer, a universal remote control
comprising input means including a set of keys or pushbuttons
for inputting commands into the remote control, infrared signal
output means including IR lamp driver circuitry for supplying
an infrared signal to a controlled device, a central processing
unit (CPU) coupled to said input means and to said signal
output means, memory means coupled to said CPU, and data
coupling means for periodically coupling said computer to said
remote control for receiving from said computer memory said
code data for creating appropriate IR lamp driver instructions
for causing said infrared signals which will cause specific
functions to occur in a specific controlled device, for operating
a variety of devices to be controlled into said memory means of
said remote control to enable said remote control to control
various devices to be controlled upon the inputting of
commands to the keys of the input means and a data
transmission system including said data coupling means for
coupling said remote control to said computer, directly, through
a telephone line, through a modem and a telephone line, or
through decoding means and a television set to receive a
television signal picked up by the television set.

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D. Asserted Prior Art
Hastreiter US 4,667,181 May 19, 1987 Ex. 1006

Ciarcia Steve Ciarcia,
“Build a Trainable
Infrared Master
Controller,” BYTE,
at 113
Mar. 1987 Ex. 1007

E. Asserted Ground of Unpatentability
We instituted inter partes review on the ground that claims 1, 2, and
20 of the ’313 patent are unpatentable under 35 U.S.C. § 103(a) over Ciarcia
and Hastreiter.

II. ANALYSIS
A. Real Party-in-Interest
Petitioner certifies that Universal Remote Control, Inc. (“URC”) is the
real party-in-interest. Pet. 1. Patent Owner, however, contends that
Petitioner failed to also name Ohsung Electronics Co., Ltd., and/or Ohsung
Electronics U.S.A., Inc. (“Ohsung”), a supplier of products to Petitioner
(URC), as real parties-in-interest and that Petitioner’s failure to do so is fatal
to its Petition. PO Resp. 37–42.
1

Section 312(a) of Title 35 of the United States Code provides that a
petition for inter partes review under 35 U.S.C. § 311 may be considered
only if, among other things, the petition identifies all real parties-in-interest.
35 U.S.C. § 312(a)(2). Whether a non-identified party is a real party-in-

1
Citations are to the revised redacted version of the PO Response (Paper
45).
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interest to a proceeding is a highly fact-dependent question. Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial
Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “A
common consideration is whether the non-party exercised or could have
exercised control over a party’s participation in a proceeding.” Trial
Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). The
concept of control generally means that “it should be enough the nonparty
has the actual measure of control or opportunity to control that might
reasonably be expected between two formal coparties.” Id.
Patent Owner argues that Ohsung exercised or could have exercised
control over Petitioner’s participation in this proceeding based on the close
relationship between Petitioner and Ohsung. PO Resp. 38. In support of
that argument, Patent Owner first directs us to evidence to support the notion
that Petitioner (URC) and Ohsung share at least one employee. According
to Patent Owner, Mr. Jak You is a “key remote control executive [who]
identifies himself as both an Ohsung and URC employee.” Id. at 39.
Evidence that Mr. You first worked for Petitioner (URC), then worked for
Ohsung for demonstrating that Petitioner and Ohsung share employees,
dates back to August 8, 2001 (Ex. 2019), July 16, 2012 (Ex. 2018), and July
30, 2013 (Exhibit 2021). Such evidence, however, does not tend to show
that Mr. You, around the time of filing of Petitioner’s Petition, held himself
out as working for both Ohsung and Petitioner, or that Ohsung and Petitioner
“share employees.” We would want to know the relationship status between
Petitioner and Ohsung around the time Petitioner filed its Petition.
In any event, and even assuming that URC and Ohsung share an
employee, we do not agree with Patent Owner that such a sharing of one
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employee (Mr. You) suggests that Ohsung exercised or could have exercised
control over Petitioner’s participation in the proceeding. For instance, Mr.
You is said to have been a director of engineering for Petitioner. Id. at 39.
Patent Owner has not shown that Mr. You was in a position within Ohsung
to persuade Ohsung and/or Petitioner to make a litigation decision to pursue
an inter partes proceeding.
Moreover, we are not persuaded by Patent Owner’s argument that
because URC previously paid for office space which an Ohsung employee
(Mr. You) used, this suggests that Ohsung has reciprocated by paying for
anything associated with the proceedings or controlled the proceeding in any
other way. PO Resp. 39–40. If anything, the evidence tends to show that
URC pays for expenses, such as the costs associated with this proceeding,
not Ohsung.
We also have considered Patent Owner’s argument that Ohsung’s and
URC’s close relationship is exemplified by a settlement and license
agreement (Ex. 2050, “agreement”) between Patent Owner and Petitioner, a
provision of which obligates Ohsung to pay royalties to Patent Owner. PO
Resp. 41. Patent Owner argues that the agreement strongly suggests that
Ohsung may have had the opportunity to control, direct, and/or influence the
present proceeding. Id. The agreement was executed in 2004. The royalties
that Patent Owner mentions were paid out in 2005, 2006, and 2007. Patent
Owner has not shown how the agreement exemplifies a close relationship in
2014 when the petition in this proceeding was filed. Moreover, the
agreement and royalties are directed to a set of patents, none of which is the
patent involved in this proceeding. Accordingly, we are not persuaded by
this argument.
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Lastly, we are not persuaded by Patent Owner’s argument that
because URC and Ohsung share litigation counsel in the related case, that
tends to show that Ohsung has controlled, or had the opportunity to control,
this proceeding. In summary, and based on the totality of arguments and
evidence presented, we are not persuaded that Ohsung is a real party-in-
interest on behalf of Petitioner.

B. Claim Interpretation
The ’313 patent has expired and, thus, cannot be amended. For claims
of an expired patent, the Board’s claim interpretation is similar to that of a
district court. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). “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 history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17
(Fed. Cir. 2005) (en banc)). However, there is a “heavy presumption” that a
claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).

1. Code Data
Claim 1 recites “code data for creating appropriate infrared (IR) lamp
driver instructions for causing an infrared signal generator to emit infrared
signals which will cause specific functions to occur in a specific controlled
device, for operating a variety of devices to be controlled” in computer
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memory. Claim 1 further recites “data coupling means for periodically
coupling said computer to said remote control for receiving from said
computer memory said code data.” Claim 20 recites similar limitations with
respect to “code data.” Claim 2 recites similar limitations with respect to
“code data,” in addition to reciting a receiving port coupled to the CPU “for
enabling” code data.
Patent Owner argues that “code data” means “instructions and timing
information for generating an infrared signal.” PO Resp. 25.
2
The parties
agree that “code data” includes timing information or data, but the parties
disagree that code data also includes instructions.
3
Id.; Pet. Reply 5; Tr. 13,
40, 59. It is necessary for us to construe the phrase because there is a
dispute about whether the prior art (Ciarcia) describes supplying from
outside the remote control (e.g., a computer connected through a cable to the
remote control), code data to the remote control. In particular, Patent Owner
agrees that Ciarcia describes supplying from outside the remote control
timing data to the remote control, but disagrees that Ciarcia also describes
supplying instructions to the remote control. PO Resp. 30–31. For the
reasons that follow, we determine that code data includes timing information
or data, but need not include instructions.

2
Patent Owner also submits (id. at 27) that “code data” means “the
transmission scheme and data used to create IR lamp driver instructions.”
Patent Owner does not, however, indicate any basis for that alternative
construction.

3
Patent Owner refers to instructions as programming (computer
instructions) or computer executable instructions. Ex. 2029 ¶ 76; Tr. 66.
Patent Owner contrasts instructions with timing information, which, it
submits, is data. Tr. 64.

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We begin with the plain language of the claims. Each of claims 1 and
20 recites “code data for creating appropriate infrared (IR) lamp driver
instructions for causing an infrared signal generator to emit infrared signals.”
Claim 2 recites enabling
4
“code data for creating appropriate IR lamp driver
instructions for causing said infrared signal output means to emit infrared
signals.” Based on the words of the claims, the code data is used for
creating IR lamp driver instructions.
Patent Owner focuses on the following passage from the Specification
of the ’313 patent in support of its argument that code data necessarily
includes instructions:
In the method for learning or acquiring code data for infrared
codes disclosed herein, no counting of pulses is carried out.
Instead the method involves the following steps:
(a) receiving a transmission of a train of pulses from a remote
control transmitter;
(b) recording the point-in-time of an edge of each pulse in a
train of the pulses;
(c) transforming the recorded point-in-time data into a list of
instructions for generating a replica of the train of pulses;
(d) timing the duration of a train of the pulses;
(e) timing the period between trains of pulses;
(f) associating a [function] key of the universal remote
control device 10 with the time duration of the train of
pulses and the list of instructions for generating a replica
of the train of pulses;

4
During trial hearing, counsel for Petitioner made arguments that due to the
word “enabling” claim 2 does not require that anything be supplied from
outside the remote control, arguments that were not presented previously.
See, e.g., Tr. 87–88. We need not and do not consider Petitioner’s
arguments advanced during trial hearing that were not raised prior to the trial
hearing. To do otherwise would be prejudicial to Patent Owner.

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(g) determining whether or not repetitions of the transmission
of train of pulses is present;
(h) ignoring repetitions of the train of pulses;
(i) noting that repetitions are present; and
(j) storing for use in a universal remote control device, the
information acquired in steps (c), (d), (e), (f), and (i).

Ex. 1001, col. 10, ll. 37–60; PO Resp. 26–27.
Patent Owner argues that step (c) from above identifies instructions,
and steps (d), (e), (f), and (i) identify timing information. PO Resp. 27.
Patent Owner further argues that Figure 14 and the corresponding text of the
Specification of the ’313 patent confirm that the phrase “code data” is
different from an IR code or signal, and is used to generate the IR code
based on instructions and timing data. Id. (citing Ex. 2029 ¶¶ 69–71). We
have reviewed the Declaration of Mr. Alex Cook in support of the proposed
construction. Neither he nor Patent Owner discusses any other passage in
the Specification of the ’313 patent. Rather, his explanation for why we
should construe narrowly “code data” focuses solely on one embodiment of
the Specification. Ex. 2029 ¶¶ 69–71.
Moreover, there are several passages that describe code data as
separate and distinct from instructions or instruction codes as follows:
Incoming data is received serially at serial port 2 and conveyed
to input port 112, when it is desired to update the code data
and/or instructions in the RAM 54.

Ex. 1001, col. 9, ll. 13–16 (emphasis added).

After the infrared code is deciphered, the code data
therefor and instructions for generating such code (see the flow
chart in FIG. 14) are stored in a programming computer 200
(FIG. 10) and the device is programmed as explained below.
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It is to be noted that the circuitry 42 has no ROM and all
instruction codes and code data are loaded directly into the
RAM 54. This allows for infinite upgradability in the field via
the serial ports 1, 2, 3.

Id. at col. 9, ll. 30–38 (emphases added).

(6) The multiplexing of the address and data lines
between the RAM 54 and the CPU 56 enables scrambling of the
instruction codes and the code data so that the memory image
in the RAM 54 is encrypted.

Id. at col. 22, ll. 17–20 (emphasis added).

From the above passages, a person of ordinary skill in the art would
have understood that code data need not include instructions. In other
words, the above passages indicate that “instructions” or instruction codes
are separate from “code data.” If code data necessarily included instructions
or instruction codes, there would be no occasion for the Specification to
refer to instructions or instruction codes separately from code data. Yet, the
Patent Owner Response and the supporting testimony of Mr. Cook (Ex.
2029) are silent with respect to these passages.
Lastly, the Specification of the ’313 patent describes that code data for
the infrared codes “may be obtained from vendor information sheets and
specifications, can be determined using the methods disclosed in U.S. Pat.
Nos. 4,623,887 and 4,626,848, or by the method disclosed herein.” Ex.
1001, col. 10, ll. 32–36. Again, the Patent Owner Response and the
supporting testimony of Mr. Cook (Ex. 2029) are silent with respect to this
passage and the other ways that code data may be obtained or determined.
In summary, there are many passages in the Specification of the ’313 patent
that tend to support not construing “code data” as Patent Owner would have
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it, yet neither the Patent Owner Response nor the supporting testimony of
Mr. Cook (Ex. 2029) discusses any of those other passages. Rather, Patent
Owner’s arguments and Mr. Cook’s testimony are confined to discussing
only the one embodiment that Patent Owner argues supports the contention
that code data necessarily includes instructions. For all of the reasons
discussed above, we are not persuaded by Patent Owner’s arguments that
“code data” necessarily includes instructions. Based on the record before us,
“code data” includes timing information or data, but need not include
instructions.

C. Principles of Law
A patent 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 said
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 ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In
that regard, an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; In re
Translogic Tech., 504 F.3d 1249, 1262 (Fed. Cir. 2007). The level of
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ordinary skill in the art is reflected by the prior art of record. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc.,
57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA
1978).

D. Section 103(a) – Ciarcia and Hastreiter
Petitioner asserts that claims 1, 2, and 20 are unpatentable under 35
U.S.C. § 103(a) as obvious over the combination of Ciarcia and Hastreiter.
Pet. 47–59. In its Petition, Petitioner explains how the combination of
Ciarcia and Hastreiter collectively meets each claim limitation and
articulates a rationale to combine the teachings. Id. Petitioner also relies
upon a Declaration of Stephen D. Bristow to support the assertions made in
connection with the Petition. Ex. 1011.
Patent Owner argues that neither Ciarcia nor Hastreiter meets the code
data limitations of the claims. PO Resp. 29–31. Patent Owner also argues
that there is insufficient reason to combine Ciarcia and Hastreiter. Id. at 31–
33. Lastly, Patent Owner argues that secondary considerations weigh in
favor of the nonobviousness of claim 1. Id. at 33–37. To support its
contentions, Patent Owner relies upon Declarations of Alex Cook (Ex. 2029)
and Ramzi Ammari (Ex. 2030).

1. Ciarcia
Ciarcia describes a trainable remote control (Master Controller) with a
keypad for inputting commands into the remote control. Ex. 1007, 114.
5

5
Citations are to the reference’s magazine page numbers rather than the
exhibit page numbers.
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The remote control includes a central processing unit (CPU) (Intel 8031
microprocessor, IC1), memory (RAM IC11) coupled to the CPU, and
infrared LEDs and driver circuitry that produce an IR signal to a controlled
device. Id. at 114–15. The remote control may be connected to a personal
computer using three wires from an RS-232 interface. Id. at 119 (“The serial
connector is an RJ-11 telephone jack instead of the usual 25-pin DB-25
connector. Only three wires are required: data from the PC, data to the PC,
and signal ground.”). The personal computer is connected to the remote
control via the RS-232 interface and is “used to set up menus of devices
(receivers, CD players, tape decks) and functions for each device (turn on,
play forward, etc.).” Id. at 114. Once a menu is downloaded to the remote
control, each function is taught and tested, after which a completed menu
and synthesis data are uploaded to the personal computer and “stored on disk
(in case you want to load it into another Master Controller or add another
device later without retraining all of them).” Id.

2. Hastreiter
Hastreiter describes keyboard data input assemblies, including
circuitry for minimizing the number of interconnections with a
microprocessor or other apparatus with which a keyboard is used. Ex. 1006,
col. 1, ll. 5–10. In particular, Hastreiter describes a keyboard circuit that
uses diodes between row and column lines of the keyboard, similar to the
keyboard circuit described in the ’313 patent. See, e.g., Ex. 1001, Fig. 9B;
Ex. 1006, Figs. 1, 2.

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3. Petitioner’s Assertions
Petitioner relies on Ciarcia to meet all of the limitations of claims 1, 2,
and 20, with the exception of the “input means.” Pet. 48–59. Based on its
construction of “input means” to include at least the corresponding structure
of a keyboard circuit as shown in Fig. 9B of the ’313 patent, Petitioner relies
on the keyboard circuit of Hastreiter in combination with Ciarcia to meet the
“input means.” Id. at 13–14, 49, 54–55, and 58. Petitioner points to
teachings in Hastreiter that the keyboard design can be used to minimize the
required number of interconnections with a microprocessor or other
apparatus with which a keyboard is used. Pet. 49; Ex. 1006, col. 1, ll. 5–11.
Mr. Bristow opines that skilled artisans at the time of the invention would
have understood that Hastreiter’s keyboard circuit could have been used in
Ciarcia’s remote control to minimize connections to the microprocessor. Ex.
1011 ¶ 74.

4. Code Data
Patent Owner does not contest that any feature is missing from the
combination of Ciarcia and Hastreiter other than supplying from outside the
remote control (e.g., a computer connected through a cable to the remote
control) “code data” to the remote control. PO Resp. 29–31. Petitioner
accounts for the supplying from outside the remote control (e.g., a computer
connected through a cable to the remote control) “code data” limitation by,
for example, relying on the description in Ciarcia of downloading completed
menu and synthesis data to the same or different Master Controller. Pet. 51–
52, 42; Ex. 1007, 114; Ex. 1107 ¶¶ 72–74; Tr. 31–32.
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According to Patent Owner, the code data limitation is missing
because Ciarcia does not describe supplying “code data” comprising
instructions and timing information for generating an infrared signal from a
computer to the remote control. PO Resp. 29–31. As explained above in the
claim construction section, Patent Owner has not shown that “code data”
necessarily includes instructions. Rather, as explained in the claim
construction section, “code data” includes timing information or data, but
need not include instructions, e.g., programmable software code. Patent
Owner concedes that Ciarcia describes downloading timing information to
the remote control. PO Resp. 30–31; Ex. 1053, 357; Tr. 41.
Based on the record before us, Petitioner has shown by a
preponderance of the evidence that all of the limitations of claims 1, 2, and
20 are met by the combination of Ciarcia and Hastreiter.

5. Combining Ciarcia and Hastreiter
Patent Owner argues that it would not have been obvious to combine
Ciarcia and Hastreiter. PO Resp. 31–33. As explained above, Petitioner
articulates a rationale with supporting evidence for combining Ciarcia and
Hastreiter. In particular, Petitioner points to teachings in Hastreiter that the
keyboard design can be used to minimize the required number of
interconnections with a microprocessor or other apparatus with which a
keyboard is used. Pet. 49; Ex. 1006, col. 1, ll. 5–11. Mr. Bristow opines
that skilled artisans at the time of the invention would have understood that
Hastreiter’s keyboard circuit could have been used in Ciarcia’s remote
control to minimize connections to the microprocessor. Ex. 1011 ¶ 74.
Accordingly, we are not persuaded by Patent Owner’s conclusory assertion
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that “[t]he Petition fails to articulate any reason why one having ordinary
skill in the art would have been motivated to combine Ciarcia with
Hastreiter.” PO Resp. 31.
Patent Owner also argues that since Hastreiter says nothing about
remote controls it is not in the same field as Ciarcia, directing attention to
Mr. Cook’s testimony, who testifies to the same. Id. at 32; Ex. 2029 ¶ 89.
The test for determining whether a prior art reference constitutes analogous
art to the claimed invention is: (1) whether the prior art is from the same
field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004).
Here, Patent Owner has not explained sufficiently why Hastreiter is
from a different field of endeavor as that of the claimed invention. Patent
Owner’s comparison between the fields of endeavor of Ciarcia and
Hastreiter misses the mark. In any event, Patent Owner’s argument that
Hastreiter is not in the same field as Ciarcia is conclusory, as is Mr. Cook’s
testimony. Neither explain why that may be so. In addition, Patent Owner
has not addressed the second prong of the above test for analogous art. And,
importantly, during cross examination, Mr. Cook testified that the field of
“keypad design is inherently a field that people in remote controls are aware
of.” Ex. 1053, 427:21–25. Such a statement would tend to support a finding
that Hastreiter is analogous art. Hastreiter is concerned with circuitry
interconnections between a microprocessor and a keyboard data input
assembly and even goes as far as to state that it is applicable for apparatuses
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that use keyboards. Ex. 1006, col. 1, ll. 5–10. The claimed invention recites
an input means including a set of keys or pushbuttons for inputting
commands into the remote control. Based on the record before us, we find
that Hastreiter is analogous art, and, thus, are not persuaded by Patent
Owner’s arguments that Hastreiter is nonanalogous art.
Patent Owner argues that Ciarcia “teaches away” from any
combination with Hastreiter. PO Resp. 32–33. Patent Owner argues that the
keypad arrangement disclosed in Hastreiter is unnecessarily complex to be
used in Ciarcia’s remote, and that a person of ordinary skill in the art would
not have looked to Hastreiter for a keyboard data input assembly that
minimized the number of diode switches used (interconnections) because the
Ciarcia remote control only has six keys, such that minimizing
interconnections would not be a concern. Id. at 32–33; Ex. 2029 ¶¶ 81–90
and 98. We are not persuaded by Patent Owner’s arguments.
Hastreiter is not limited to only keyboards “having a large number of
hard keys” as Mr. Cook asserts. Ex. 2029 ¶ 93. Rather, Hastreiter explains
that although a five by five array of keyboard conductors is shown, a person
having ordinary skill in the art would have understood that “the present
invention may be easily adapted to a square matrix of any size.” Ex. 1006,
col. 3, ll. 31–34. For this reason, we do not give Mr. Cook’s testimony
substantial weight that Hastreiter is limited to only keyboards having a large
number of keys, and thus is unnecessarily complex to be used in Ciarcia’s
remote, because that testimony is not supported by what Hastreiter actually
conveys to a person of ordinary skill in the art. For similar reasons, we do
not give Mr. Cook’s testimony substantial weight that “Ciarcia’s remote
control would not benefit from Hastreiter’s keypad arrangement because
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Ciarcia’s remote has very few keys” and that the “benefit of Hastreiter’s
keypad arrangement increases as the number of keys required grows larger.”
Ex. 2029 ¶ 98. Again, Hastreiter is not limited to only keypads with a large
number of keys. Moreover, Mr. Cook recognizes that, although the benefit
may increase with more keys on a keypad, there is still a benefit from the
Hastreiter arrangement that reduces the number of electrical
interconnections between the keypad and the microprocessor. Id. “[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 550 U.S. at 417.

6. Objective Evidence of Nonobviousness
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham, 383 U.S. at 17. Notwithstanding what the
teachings of the prior art would have suggested to a person of ordinary skill
in the art at the time of the claimed invention, the totality of evidence
submitted, including objective evidence of nonobviousness, may lead to a
conclusion that the claimed invention would not have been obvious to one
with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed.
Cir. 1984).
There must be a demonstrated “nexus” between the merits of the
claimed invention and the evidence of secondary considerations before that
evidence is accorded substantial weight in an obviousness determination.
Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575
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(Fed. Cir. 1984); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539
(Fed. Cir. 1983); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996);
In re Fielder, 471 F.2d 640, 642 (CCPA 1973). “Nexus” is a legally and
factually sufficient connection between the objective evidence and the
claimed invention, such that the objective evidence should be considered in
determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing
Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). In the absence of an established
nexus with the claimed invention, secondary consideration factors such as
commercial success, satisfaction of a long-felt but unresolved need,
licensing and copying by others are not entitled to much, if any, weight and
generally have no bearing on the legal issue of obviousness. See In re
Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985). The
burden of showing that there is a nexus lies with the Patent Owner. Id.; see
In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
Patent Owner argues that several of the patents owned by Patent
Owner, including the ’313 patent, were licensed by a substantial portion of
the industry, showing commercial acquiescence and competitor acceptance
of Patent Owner’s licensed patents. PO Resp. 35. The mere existence of
several licensees, without more specific information about the circumstances
surrounding the licensing, is not a good indicator of nonobviousness. In
EWP Corp. v Reliance Universal Inc., 755 F.2d 898, 907–08 (Fed. Cir.
1985), the U.S. Court of Appeals for the Federal Circuit stated:
Such [licensing] programs are not infallible guides to
patentability. They sometimes succeed because they are
mutually beneficial to the licensed group or because of business
judgments that it is cheaper to take licenses than to defend
infringement suits, or for other reasons unrelated to the
unobviousness of the licensed subject matter.
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Here, we are not told the circumstances surrounding the licenses.
Patent Owner directs us to no testimony from any licensee with regard to
why the licensee took a license from Patent Owner. It is unknown how
much of the decision to take a license stems from a business cost-benefit
analysis with regard to defending an infringement suit or from another
business reason, rather than from acknowledged merits of the claimed
invention. Patent Owner also does not disclose how many entities refused to
take a license or why some entities, if any, refused to take a license. Four
licensees may not represent a very successful licensing program if the field
of potential application of Patent Owner’s technology includes a large
number of potential licensees.
Patent Owner also argues that it, through its upgradeable remotes, and
one of its licensees, Logitech, through its Harmony Remotes, has enjoyed
tremendous commercial worldwide success. PO Resp. 36. In particular,
Patent Owner argues that it is a market leader in original equipment
manufacturing of universal remote controls and made approximately $1.6
billion in worldwide gross sales from 2000 to 2013. Id. Patent Owner
argues that Logitech is the established market leader in consumer universal
remote controls since 2007 and that from 2007 through 2014, Logitech
averaged $100 million in worldwide net sales of remote controls, a
substantial number of sales containing the technology of the claimed
invention. Id. at 36–37.
Patent Owner does not describe the components or manner of
operation of the products sold by it or Logitech. Rather, Patent Owner
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directs us to several paragraphs from the Ammari Declaration. Ex. 2064.
6

Mr. Ammari directs us to claim charts that were created during litigation
between Patent Owner and Logitech, along with several user manuals of
several of Logitech’s remote control products. Id. ¶¶ 20–24. Mr. Ammari
testifies that the manuals depict remotes that are upgradeable via a
connection to a computer and that, when using a Harmony Remote, a user
uses software or an online service to configure downloaded code data to the
remote control. Id. ¶¶ 23, 24. Such a showing does not establish a nexus
between the alleged commercially successful products and the claimed
invention.
First, we do not know the context of the litigation between Logitech
and Patent Owner, such as whether Logitech agreed to the charge of
infringement. Based on the record before us, Patent Owner has not
established that the infringement charts are meritorious insofar as showing a
nexus. Moreover, Patent Owner has not shown sufficiently that any of the
Logitech manuals would have conveyed to a user to use “Logitech’s desktop
software or an online service to configure downloaded code data to the
remote control” as Mr. Ammari contends. Ex. 2064 ¶ 24. We do not give
much weight to Mr. Ammari’s testimony in this regard because it is
conclusory. He does not direct us to where in any of the manuals there is a
description of configuring a remote control to download code data to the
remote control.

6
We cite to the revised public version of the declaration, Exhibit 2064. At
the time of his declaration, Mr. Ammari was employed by Patent Owner and
has been employed by Patent Owner since 1997. Ex. 2064 ¶¶ 1, 4.
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In any event, we do not know why $100 million of Logitech’s or $1
billion of Patent Owner’s sales constitutes commercial success. It is well
established that absolute sale numbers without market share data does not
establish commercial success. See, e.g., In re Huang, 100 F.3d at 140.
Patent Owner’s Response does not discuss and present market share
information.
In addition, Patent Owner must prove that the sales were a direct
result of the unique characteristics of the invention, and not a result of
economic and commercial factors unrelated to the quality of the patent
subject matter. In re Applied Materials, Inc., 692 F.3d 1289, 1299–1300
(Fed. Cir. 2012). In addition, “if the commercial success is due to an
unclaimed feature of the device” or “if the feature that creates the
commercial success was known in the prior art, the success is not pertinent.”
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006); see
also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a
determination of “whether the commercial success of the embodying product
resulted from the merits of the claimed invention as opposed to the prior art
or other extrinsic factors”). Here, Patent Owner has not directed us to
evidence to explain the reasons for the alleged commercial success of
Logitech’s and Patent Owner’s remote controls.
For all of the foregoing reasons, Patent Owner has failed to establish
the necessary “nexus” between the evidence of alleged commercial success
and the invention claimed.

7. Conclusion — Obviousness
We have considered the entirety of the evidence before us, including
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the evidence of obviousness and the evidence of licensing and commercial
success submitted by Patent Owner as an indicia of nonobviousness. On
balance, the evidence of obviousness outweighs the evidence of
nonobviousness, with respect to the challenged claims. The evidence of
obviousness is strong and the evidence of nonobviousness is weak, for the
reasons discussed above. All of Patent Owner’s arguments have been
considered. Petitioner has proved, by a preponderance of the evidence that
claims 1, 2, and 20 are unpatentable over the combination of Ciarcia and
Hastreiter.

E. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Exhibit 1043 and portions of
Petitioner’s Reply that rely on Exhibit 1043 as not relevant to the
proceeding. PO Mot. to Exclude 1. The parties refer to Exhibit 1043 as a
data sheet for an Intel 8254 Programmable Interval Timer (PIT). Ciarcia
describes a 8254 PIT that is programmed to generate IR signals. Ex. 1007,
118–19. In its Reply, Petitioner relies on Exhibit 1043 to show the details of
the 8254 PIT used in the Ciarcia described device. We did not and need not
consider such arguments or evidence in connection with the Reply. We have
determined that Petitioner has demonstrated, by a preponderance of the
evidence that the challenged claims are unpatentable, without considering
Petitioner’s arguments regarding the details of the Intel 8254 PIT used in the
Ciarcia described device. Accordingly, we dismiss Patent Owner’s Motion
to Exclude.

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F. Petitioner’s Motion to Exclude
Petitioner moves to exclude portions of Exhibit 1053 and portions of
Ex. 1054. Exhibits 1053 and 1054 are deposition transcripts of Patent
Owner’s witness, Mr. Alex Cook. With respect to both exhibits, Petitioner
moves to exclude portions of Mr. Cook’s testimony for, among other
reasons, being unreliable. Pet. Mot. to Exclude 1. In particular, Petitioner
moves to exclude Exhibit 1053 at 419:1–2, 419:14–15, 420:5–21, 421:8–
422:2, and 422:9–13, and Exhibit 1054 at 745:4–8, 745:15–746:1, 746:13–
747:4, 747:11–16, 747:22, 748:2, 749:10–11, 749:17–21, and 750:23–751:3.
Id.
Petitioner has not shown that Patent Owner relied on either Exhibit
1053 or 1054 in support of its papers filed in this proceeding, nor do we find
that Patent Owner relied on either exhibit in support of its papers filed in this
proceeding. Moreover, Petitioner has not shown that it relied on the
objected to portions of either exhibit in support of its papers filed in this
proceeding, nor do we find that Petitioner relied on the objected to portions
of either exhibit in support of its papers filed in this proceeding. Because we
were not directed to the objected to portions of the evidence in any papers
before us, we did not and need not consider the objected to portions of
Exhibits 1053 and 1054 in rendering this decision. Accordingly, we dismiss
Patent Owner’s Motion to Exclude.

G. Motions to Seal
Patent Owner and Petitioner each filed several papers (e.g., Paper 14)
and exhibits (e.g., Exhibit 1050) under seal, along with motions to seal
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(Papers 15 and 22) and a protective order (Ex. 2065). The motions are
unopposed and are granted.
There is an expectation that information will be made public where
the information is identified in a final written decision, and that confidential
information that is subject to a protective order ordinarily would become
public 45 days after final judgment in a trial, unless a motion to expunge is
granted. 37 C.F.R. § 42.56; Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,761 (Aug. 14, 2012). In rendering this Final Written Decision, it
was not necessary to identify, nor discuss in detail, any confidential
information. A party who is dissatisfied with this Final Written Decision
may appeal the Decision pursuant to 35 U.S.C. § 141(c), and has 63 days
after the date of this Decision to file a notice of appeal. 37 C.F.R. § 90.3(a).
In view of the foregoing, the confidential documents filed in the
instant proceeding will remain under seal, at least until the time period for
filing a notice of appeal has expired or, if an appeal is taken, the appeal
process has concluded. The record for the instant proceeding will be
preserved in its entirety, and the confidential documents will not be
expunged or made public, pending appeal. Notwithstanding 37 C.F.R.
§ 42.56 and the Office Patent Trial Practice Guide, neither a motion to
expunge confidential documents nor a motion to maintain these documents
under seal is necessary or authorized at this time. See 37 C.F.R. § 42.5(b).

III. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 1, 2, and 20
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of the ’313 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
the combination of Ciarcia and Hastreiter.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1, 2, and 20 of the ’313 patent are held
unpatentable;
FURTHER ORDERED that the parties’ respective motions to seal are
granted;
FURTHER ORDERED that the parties’ respective motions to exclude
evidence are dismissed; and
FURTHER ORDERED that, because this is a final written decision,
parties 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:
Douglas A. Miro
dmiro@ostrolenk.comPeter Kang
pkang@sidley.com

Theodore Chandler
tchandler@sidley.com

Ferenc Pazmandi
fpazmandi@sidley.com

Keith Barkaus
kbarkaus@ostrolenk.com

For Patent Owner:

Eric Maiers
maierse@gtlaw.com

Michael Nicodema
nicodemam@gtlaw.com

James Lukas
lukasj@gtlaw.com

Robbie Harmer
harmer@gtlaw.com