Universal Electronics, Inc.Download PDFPatent Trials and Appeals BoardNov 10, 2020IPR2020-00951 (P.T.A.B. Nov. 10, 2020) Copy Citation Trials@uspto.gov Paper 13 571-272-7822 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. ____________ IPR2020-00951 Patent 9,911,325 B2 _____________ Before PATRICK M. BOUCHER, MINN CHUNG, and SHARON FENICK, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 Denying Motion for Joinder 35 U.S.C. § 315(c); 37 C.F.R. § 42.122 IPR2020-00951 Patent 9,911,325 B2 2 I. INTRODUCTION Roku, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1, 6, 8, 9, and 11–16 of U.S. Patent No. 9,911,325 B2 (Ex. 1001, “the ’325 patent”). The Petition involves the same parties and the same patent at issue in an instituted trial proceeding in IPR2019-01614 (“the related IPR”). Concurrent with its Petition, Petitioner also filed a Motion for Joinder, seeking to join this proceeding with IPR2019-01614. Paper 3 (“Mot.”). Universal Electronics, Inc. (“Patent Owner”) filed both a Preliminary Response and an Opposition to Petitioner’s Joinder Motion. Papers 11 (“Prelim. Resp.”), 7 (“Opp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s Opposition. Paper 10 (“Reply”). For the reasons set forth below, we deny both the Petition and the Motion for Joinder. II. BACKGROUND A. Related Matters According to Petitioner, the ’325 patent is the subject of the following district court litigation: Universal Electronics, Inc. v. Roku, Inc., No. 8:18- cv-01580 (C.D. Cal.). Pet. 78. Patent Owner identifies the same case as a related matter. Paper 6, 1. The parties additionally identify the following proceedings as involving the ’325 patent: (1) Universal Electronics, Inc. v. Funai Electric Co., No. 8:20-cv-0700 (C.D. Cal.); (2) Universal Electronics, Inc. v. TCL Electronics Holdings Ltd., No. 8:20-cv-0704 (C.D. Cal.); (3) Universal Electronics, Inc. v. TCL Electronics Holdings Ltd., No. 8:20-cv-3328 (C.D. IPR2020-00951 Patent 9,911,325 B2 3 Cal.); (4) Universal Electronics, Inc. v. Hisense Co., No. 8:20-cv-0696 (C.D. Cal.); and (5) Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-3450 (ITC). Pet. 78–79; Paper 6, 1. Patent Owner also identifies the following case as a related matter: Universal Electronics Inc. v. Roku, Inc., No. 8:20-cv-0701 (C.D. Cal.). Paper 6, 1. The ’325 patent is also the subject of a co-pending petition for inter partes review filed by Petitioner in IPR2020-00953, where Petitioner also seeks joinder with IPR2019-01614. Pet. 79. 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, IPR2019-01621, IPR2020-00952, IPR2020-00953, and IPR2020-01012. See Paper 6, 1–2. B. Real Parties In Interest The parties identify only themselves as real parties in interest. Pet. 78; Paper 6, 1. C. The ’325 Patent The ’325 patent, titled “Relaying Key Code Signals Through a Remote Control Device,” issued March 6, 2018, from U.S. Patent Application No. 15/153,905, filed May 13, 2016 (“the ’905 application”). Ex. 1001, codes (21), (22), (45), (54). The ’905 application is a continuation of U.S. Patent Application No. 13/068,820, filed May 21, 2011 (issued as U.S. Patent No. 9,355,553), which is a continuation of U.S. Patent Application No. 12/462,526, filed August 4, 2009 (issued as U.S. Patent IPR2020-00951 Patent 9,911,325 B2 4 No. 8,004,389), which, in turn, is a continuation of U.S. Patent Application No. 10/737,029, filed December 16, 2003 (issued as U.S. Patent No. 7,589,642). Id. at code (63), 1:7–14. 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.” Id. at 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. IPR2020-00951 Patent 9,911,325 B2 5 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 IPR2020-00951 Patent 9,911,325 B2 6 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 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 IPR2020-00951 Patent 9,911,325 B2 7 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 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. D. Illustrative Claim Independent claim 1 is illustrative of the challenged claims and is reproduced below. IPR2020-00951 Patent 9,911,325 B2 8 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 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. Ex. 1001, 10:42–11:5. IPR2020-00951 Patent 9,911,325 B2 9 E. Asserted Grounds of Unpatentability Petitioner asserts the following grounds of unpatentability (Pet. 2–3): Claim(s) Challenged 35 U.S.C. § References 1 103(a)1 Rye,2 Skerlos3 8, 9, 11–13, 15–16 103(a) Rye, Skerlos, Woolgar4 6 103(a) Rye, Skerlos, Gutman5 14 103(a) Rye, Skerlos, Woolgar, Gutman 1, 6, 8, 16 103(a) Caris,6 Dubil7 8, 9, 11–16 103(a) Caris, Dubil, Woolgar 1 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. 2 U.S. Patent Application Pub. No. 2004/0080428 A1, published Apr. 29, 2004 (Ex. 1005, “Rye”). 3 U.S. Patent No. 4,426,662, filed Jan. 18, 1982, issued Jan. 17, 1984 (Ex. 1006, “Skerlos”). 4 U.S. Patent Application Pub. No. 2005/0168658 Al, published Aug. 4, 2005 (Ex. 1029, “Woolgar”). 5 U.S. Patent No. 7,861,262 B1, filed Sept. 7, 2001, issued Dec. 28, 2010 (Ex. 1030, “Gutman”). 6 U.S. Patent No. 7,562,128 B1, filed Sept. 1, 2000, issued July 14, 2009 (Ex. 1007, “Caris”). 7 U.S. Patent No. 8,132,105 B1, filed Oct. 10, 2000, issued Mar. 6, 2012 (Ex. 1008, “Dubil”). IPR2020-00951 Patent 9,911,325 B2 10 Petitioner supports its challenge with a declaration from Dr. Samuel H. Russ (Ex. 1003). 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 alleging infringement of the ’325 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 two brand new IPR petitions that have been time-barred for over eight months” (emphasis omitted)). 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 IPR2020-00951 Patent 9,911,325 B2 11 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. “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. IPR2020-00951 Patent 9,911,325 B2 12 PETITIONER Lestin L. Kenton Jon E. Wright Daniel S. Block Timothy L. Tang STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C. lkenton-ptab@sternekessler.com jwright-ptab@sternekessler.com dblock-ptab@sternekessler.com ttang-ptab@sternekessler.com PATENT OWNER S. Benjamin 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 cbean@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 Copy with citationCopy as parenthetical citation