Universal Electronics, Inc.

Patent Trials and Appeals Board

Nov 10, 2020

IPR2020-00951 (P.T.A.B. Nov. 10, 2020)

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
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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.
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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
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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.
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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
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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
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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.
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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.
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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”).
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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
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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.

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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