Universal Electronics, Inc.

Patent Trials and Appeals Board

May 25, 2021

IPR2019-01619 (P.T.A.B. May. 25, 2021)

Trials@uspto.gov Paper 17
571-272-7822 Date: May 25, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ROKU, INC.,
Petitioner,

v.

UNIVERSAL ELECTRONICS, INC.,
Patent Owner.
____________

IPR2019-01619
Patent 7,782,309 B2
____________

Before PATRICK M. BOUCHER, MINN CHUNG, and
SHARON FENICK, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Roku, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
an inter partes review of claim 1 (the “challenged claim”) of U.S. Patent
No. 7,782,309 B2 (Ex. 1001, “the ’309 patent”) based on a single ground of
obviousness over the combination of Herz (U.S. Patent No. 6,407,779 B1,
Ex. 1006) and Zetts (European Patent Application Publication No. 0536554
A1, Ex. 1007). Pet. 10. Universal Electronics, Inc. (“Patent Owner”) filed a
Preliminary Response (Paper 6, “Prelim. Resp.”). Subsequently, Petitioner
requested additional briefing to further address the Board’s discretion under
35 U.S.C. § 325(d), and we authorized Petitioner’s filing of Petitioner’s
Reply to Patent Owner’s Preliminary Response (Paper 8, “Reply”).1 See
Paper 7. We also authorized Patent Owner’s Sur-reply (Paper 9, “Sur-
reply”) to respond to Petitioner’s Reply. See Paper 7. Upon consideration
of the Petition, the Preliminary Response, the Reply, and the Sur-reply,
based on the record presented, we exercised our discretion to deny
institution under § 325(d). Paper 11 (“Decision” or “Dec.”), 8–20.
Petitioner asks us to reconsider our exercise of discretion under § 325(d) in a
Request for Rehearing (Paper 12, “Request” or “Req.”). Petitioner also filed
a request for the Precedential Opinion Panel (“POP”) to review the Decision
(Paper 13 (Notification of Receipt of POP Request)), which the POP denied
(Paper 15 (Order)).

1 The parties’ § 325(d) arguments focus on the prosecution history of Inter
Partes Reexamination 95/001,759 (the “Reexamination Proceeding”), which
confirmed the patentability of claims 1–8 of the ’309 patent (Ex. 1003,
1:17). See Pet. 46–48; Reply 1–5; Prelim. Resp. 16–32; Sur-reply 1–5.
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For the reasons discussed below, Petitioner’s Request for Rehearing is
denied.
II. STANDARD OF REVIEW
A party requesting rehearing bears the burden of showing that the
decision should be modified. 37 C.F.R. § 42.71(d). “The request must
specifically identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously addressed in
a motion, an opposition, or a reply.” Id. Because Petitioner seeks rehearing
of our Decision denying the Petition, it must show an abuse of discretion.
See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel
will review the decision for an abuse of discretion.”). An abuse of discretion
occurs when a “decision was based on an erroneous conclusion of law or
clearly erroneous factual findings, or . . . a clear error of judgment.” PPG
Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed.
Cir. 1988).
III. ANALYSIS
A. Legal Background
Institution of inter partes review is discretionary. See Harmonic Inc.
v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
§ 314(a). Pursuant to § 325(d), in determining whether to institute an inter
partes review, “the Director may take into account whether, and reject the
petition or request because, the same or substantially the same prior art or
arguments previously were presented to the Office.” 35 U.S.C. § 325(d).
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In determining whether to exercise our discretion under § 325(d), we
consider the following non-exclusive factors:
(a) the similarities and material differences between the asserted
art and the prior art involved during examination;
(b) the cumulative nature of the asserted art and the prior art
evaluated during examination;
(c) the extent to which the asserted art was evaluated during
examination, including whether the prior art was the basis for
rejection;
(d) the extent of the overlap between the arguments made during
examination and the manner in which Petitioner relies on the
prior art or Patent Owner distinguishes the prior art;
(e) whether Petitioner has pointed out sufficiently how the
Examiner erred in its evaluation of the asserted prior art; and
(f) the extent to which additional evidence and facts presented in
the Petition warrant reconsideration of the prior art or arguments.
Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
Paper 8 at 17–18 (PTAB Dec. 15, 2017) (§ III.C.5, first para., designated
precedential Aug. 2, 2019) (“Becton, Dickinson”).
Factors (a), (b), and (d) of the Becton, Dickinson factors relate to
whether the art or arguments presented in the Petition are the same or
substantially the same as those previously presented to the Office. Advanced
Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
01469, Paper 6 at 10 (PTAB Feb. 13, 2020) (designated precedential
Mar. 24, 2020) (“Advanced Bionics”). Factors (c), (e), and (f) “relate to
whether the petitioner has demonstrated a material error by the Office” in its
prior consideration of that art or arguments. Id. Under a two-part
framework set forth in Advanced Bionics, we first determine whether the
same or substantially the same art previously was presented to the Office or
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whether the same or substantially the same arguments previously were
presented to the Office by considering factors (a), (b), and (d). Id. at 8, 10.
If “either condition of first part of the framework is satisfied”—that is, if
“the same or substantially the same art previously was presented to the
Office” or “the same or substantially the same arguments previously were
presented to the Office,” we then consider factors (c), (e), and (f) to
determine whether Petitioner has demonstrated a material error by the
Office. Id. at 8, 10.
B. Decision Denying Institution
Our Decision Denying Institution evaluated Petitioner’s § 325(d)
arguments presented in the Petition and the Reply by considering the Becton,
Dickinson factors within the two-part framework set forth in Advanced
Bionics. See Dec. 8–20. Addressing the first part of the Advanced Bionics
framework, we determined that the only ground of unpatentability asserted
in the Petition—the alleged obviousness based on the combination of Herz
and Zetts—presented the same or substantially the same art previously
presented to the Office. Id. at 8–17. Regarding Herz, we considered Becton,
Dickinson factors (a) and (b) and determined that the same art was
previously presented to the Office because Herz was previously presented to
the Office during the Reexamination Proceeding in an Information
Disclosure Statement (“IDS”), which was submitted about two months
before the Notice of Intent to Issue a Reexamination Certificate (“NIRC”)
mailed. Id. at 11. With respect to Zetts, we determined that substantially the
same art was previously presented to the Office because Zetts is cumulative
to Kim (U.S. Patent No. 7,174,518 B2, Ex. 2002), which was submitted with
the third-party requester (Logitech)’s reexamination request. Id. at 13–17.
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Having determined that the first part of the Advanced Bionics framework is
satisfied, we then considered Becton, Dickinson factors (c), (e), and (f) in the
second part of the framework and determined, based on the record presented,
Petitioner did not explain sufficiently how the Examiner erred during the
Reexamination Proceeding in a manner material to the patentability of the
challenged claim, claim 1. Id. at 17–20. Weighing the Becton, Dickinson
factors, we determined that the factors largely weighed against institution
and exercised our discretion to deny the Petition under 35 U.S.C. § 325(d).
Id. at 20.
C. Arguments in the Request Regarding the First Part of Advanced Bionics
In the Request, Petitioner asserts that the Decision misapprehended
Advanced Bionics because the fact that Herz was previously presented to the
Office in an Information Disclosure Statement (IDS) is not sufficient to
satisfy the first part of the Advanced Bionics framework with respect to
Herz. See Req. 11–15. According to Petitioner, the first part of the
Advanced Bionics framework should include an evaluation of whether the
prior art was actually considered by the Office, which Becton, Dickinson
“expressly distinguished [from] the situation ‘where the prior art was simply
listed in an IDS during prosecution.’” Id. at 14 (alteration added) (quoting
Becton, Dickinson, 23; citing Becton, Dickinson, 17–18).
The passage quoted by Petitioner, however, comes from Becton,
Dickinson’s discussion of factor (c) “the extent to which the asserted art was
evaluated during examination, including whether the prior art was the basis
for rejection.” See Becton, Dickinson, 22–23. As discussed above, we
consider Becton, Dickinson factor (c) in the second part of the Advanced
Bionics framework, not the first part. Advanced Bionics, 8, 10.
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In the first part of the framework, as explained in Advanced Bionics,
“[p]reviously presented art includes art made of record . . . such as on an
Information Disclosure Statement (IDS).” Advanced Bionics, 7–8. The
record shows that Herz was listed on the IDS submitted on June 27, 2014
during the Reexamination Proceeding, and the Examiner signed the IDS
with the statement “ALL REFERENCES CONSIDERED EXCEPT
WHERE LINED THROUGH.” Ex. 1003, 27. The Examiner did not line
through Herz. Id. Thus, contrary to Petitioner’s contention, the Decision
did not misapprehend Advanced Bionics in finding that Herz was previously
was presented to the Office during the Reexamination Proceeding. See
Biocon Pharma Ltd. v. Novartis Pharmaceuticals Corp., IPR2020-01263,
Paper 12 at 9 (PTAB Feb. 16, 2021) (determining that the first part of the
Advanced Bionics framework is satisfied when certain prior art was listed on
an IDS and the Examiner signed the IDS with the statement “all references
considered except where lined through”); Husky Injection Molding Sys.’s,
Ltd. v. Plastipak Packaging, Inc., IPR2020-00437, Paper 23 at 12 (PTAB
July 29, 2020) (determining that the first part of the Advanced Bionics
framework is satisfied when prior art was listed on an IDS, the Examiner
annotated the IDS with the statement “[a]ll references considered except
where lined through,” and the Examiner did not line through the prior art).
To the extent Petitioner’s Request calls for modifying Advanced
Bionics to evaluate Becton, Dickinson factor (c) in the first part of the
framework, we decline to consider such an argument because we are bound
by the precedential Advanced Bionics decision.2

2 As noted above, the Precedential Opinion Panel denied Petitioner’s request
for a POP review. See Paper 15.
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As discussed above, under Advanced Bionics, if either one of the
conditions—“the same or substantially the same art previously was
presented to the Office” or “the same or substantially the same arguments
previously were presented to the Office”—is met, then the first part of the
Advanced Bionics framework is satisfied. Advanced Bionics, 8. In the
Decision, we explained that, because “with respect to Petitioner’s reliance
on Herz, the same prior art was previously presented to the Office,” we need
not reach the question of “whether the same or substantially the same
arguments previously were presented to the Office.” Dec. 12.
The question we declined to reach relates to the Examiner’s statement
in the NIRC that “the information submitted in the June 2014 IDS has been
considered only to the extent that the submitting party has ‘explained the
content and relevance’” (“NIRC statement”). Ex. 1003, 8. In the Reply and
Sur-reply, the parties disputed the significance of the NIRC statement. See
Reply 2–3; Sur-reply 1–4. Petitioner argued that the NIRC statement means
that Herz was not considered substantively by the Office during the
Reexamination Proceeding (Reply 2–3 (citing Ex. 1003, 8)), whereas Patent
Owner argued “[t]he Examiner . . . explicitly noted that ‘ALL
REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH,’”
which “shows Herz was considered and evaluated” (Sur-reply 1 (citing
Ex. 1003, 8, 27)). Although we acknowledge an internal inconsistency in
the record as to the extent the Examiner considered Herz, there is no
question that Herz was presented to the Office during the Reexamination
Proceeding.
As discussed above, to the extent this dispute relates to Becton,
Dickinson factor (c) “the extent to which the asserted art was evaluated
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during examination, including whether the prior art was the basis for
rejection,” we consider the issue in the second part of the Advanced Bionics
framework. In the Decision, we explained that, in the context of the first
part of the Advanced Bionics framework, this dispute relates to Becton,
Dickinson factor (d)—“the extent of the overlap between the arguments
made during examination and the manner in which petitioner relies on the
prior art” and the question of “whether the same or substantially the same
arguments previously were presented to the Office.” Dec. 12. As discussed
above, it was not necessary to reach the “the same or substantially the same
arguments” question with respect to Herz because Herz was previously
presented to the Office. Id. In the Request, although Petitioner
acknowledges this analysis in the Decision, Petitioner does not contend this
analysis misapprehended Advanced Bionics. See Req. 11–12 & n.8 (citing
Dec. 12).
Addressing next Petitioner’s reliance on Zetts in the Petition,
Petitioner argued in the Reply that Zetts is not cumulative to Kim. Reply 4–
5. Patent Owner disagreed and argued that Zetts is cumulative to Kim and
that Kim was considered during the Reexamination Proceeding. Prelim.
Resp. 23–24; Sur-reply 4–5. In the Decision, based on the record presented,
we determined that Zetts is cumulative to Kim and, therefore, Petitioner’s
reliance on Zetts in the Petition presented substantially the same art
previously presented to the Office. Dec. 16–17. The Decision also
explained that, in the context of the first part of the Advanced Bionics
framework, we need not address the parties’ dispute whether Kim was
substantively considered during the Reexamination Proceeding because, for
the reasons similar to those discussed with respect to Herz, it was not
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necessary to reach the question of “whether the same or substantially the
same arguments previously were presented to the Office” with respect to
Zetts. Id. at 17. In the Request, Petitioner does not dispute the Decision’s
determination that Zetts is cumulative to Kim. See Req. 9–11.
In sum, the Decision did not misapprehend Advanced Bionics or
Becton, Dickinson in determining that the Petition presented the same or
substantially the same art previously presented to the Office in Petitioner’s
only asserted ground of unpatentability based on Herz and Zetts.
D. Arguments in the Request Regarding the Second Part of
Advanced Bionics
Turning next to the second part of the Advanced Bionics framework,
as discussed in the Decision, although Petitioner argued in the Petition and
the Reply that the Examiner did not consider or apply Herz or Kim in any
office action during the Reexamination Proceeding, Petitioner did not
discuss the Becton, Dickinson factors in detail. See Dec. 18 (citing Pet. 46–
48; Reply 1–5). In particular, the Decision noted that Petitioner did not
discuss factor (e)—i.e., “whether Petitioner has pointed out sufficiently how
the Examiner erred in its evaluation of the asserted prior art”—except for a
single conclusory sentence at the end of the Reply stating “[f]inally, and in
light of the above, Becton, Dickinson factors (d), (e), and (f) either weigh in
favor of, or are at most neutral to, institution.” Id. (citing Pet. 46–48;
Reply 1–5). Thus, the Decision found that Petitioner did not explain
adequately in the Petition and the Reply how the Examiner erred in a manner
material to the patentability of claim 1 by allegedly not considering Herz
before confirming the patentability of claim 1. Dec. 19 (citing Pet. 47–48;
Reply 1–3). Regarding Kim, the Decision found that Petitioner did not
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discuss Kim in much detail and did not explain adequately why the
Examiner’s treatment of Kim during the Reexamination Proceeding was an
error material to the patentability of claim 1. Id. (citing Reply 3–5).
In the Request, Petitioner contends that the Decision overlooked an
argument by Petitioner that “the detailed mapping in the Petition”
demonstrated material error by the Examiner by showing that Herz discloses
various limitations of claim 1, including “limitations [1.0]–[1.3], and [1.5].”
Req. 5–6. But Petitioner did not present such an argument in the Petition or
the Reply. See Pet. 46–48; Reply 1–5. In addition, Petitioner did not
explain how its mapping of Herz to disclose certain limitations of claim 1
demonstrates material error by the Examiner. See Advanced Bionics, 9 (“If
reasonable minds can disagree regarding the purported treatment of the art or
arguments, it cannot be said that the Office erred in a manner material to
patentability.”). That is, Petitioner did not meaningfully connect its
obviousness mapping to a demonstration of Examiner error during the
Reexamination Proceeding. See Pet. 15–48; Reply 1–5. We could not have
misapprehended or overlooked arguments or evidence that were not
presented or developed in the Petition or the Reply.
Regarding Kim, the Request argues that “the Petition identified a
material error by the Office in confirming the patentability of the challenged
claim” because the Petition demonstrated that “the combination of Herz and
Zetts renders limitations [1.4] and [1.6] obvious.” Req. 10 (emphasis
added). Again, Petitioner did not present this argument in the Petition or the
Reply. See Pet. 46–48; Reply 1–5. In addition, Petitioner does not explain
adequately how Petitioner’s alleged demonstration of obviousness over Herz
and Zetts shows that the Examiner’s treatment of Kim during the
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Reexamination of Proceeding was an error material to the patentability of
claim 1.
Next, the Request argues that we should not have denied the Petition
“merely because the word ‘error’ was not invoked”3 because Petitioner did
not “have the benefit of the Advanced Bionics precedent” when preparing
the Petition or the Reply. See Req. 9. But Becton, Dickinson setting forth
factor (e)—“whether Petitioner has pointed out sufficiently how the
Examiner erred in its evaluation of the asserted prior art”—was designated
precedential on August 2, 2019, which was about a month before the filing
date of the Petition (September 18, 2019) and approximately six months
before Petitioner’s filing of the Reply (February 20, 2020).
As discussed in the Decision, the Petition and the Reply did not
discuss any Becton, Dickinson factors in detail, other than possibly
addressing factor (c) in substance by arguing that Herz was not substantively
considered by the Examiner. See Dec. 17–19. As noted above, Petitioner
requested and was granted additional briefing in the form of Petitioner’s
Reply to further address discretion under § 325(d). See Paper 7.
Nonetheless, Petitioner did not meaningfully discuss the Becton, Dickinson
factors in its Reply and, in particular, did not address factor (e), which
requires an evaluation of “whether Petitioner has pointed out sufficiently
how the Examiner erred in its evaluation of the asserted prior art.” See
Reply 1–5. Thus, the deficiencies in the Petition and the Reply we identified
in the Decision was not a mere omission of the word “error” but, rather,

3 In making this argument, the Request appears to concede that neither the
Petition nor the Reply discussed material error by the Office.
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Petitioner’s failure to address the analysis specified in Becton, Dickinson in
a meaningful way.
As discussed above, institution of inter partes review is discretionary.
See Harmonic, 815 F.3d at 1367. Under the specific facts and circumstances
of this case, where Petitioner had sufficient notice of the Becton, Dickinson
precedent and had ample opportunities in the Petition and the Reply to
address the Becton, Dickinson factors but did not adequately address the
analysis specified in Becton, Dickinson, it was not an abuse of discretion to
deny institution of inter partes review under § 325(d).
The record shows that, rather than overlooking or misapprehending
any argument or evidence in the Petition or the Reply, the Decision simply
considered the arguments and explanations of the evidence Petitioner
presented within the four corners of the Petition and the Reply, and properly
determined that exercise of discretion under 35 U.S.C. § 325(d) was
appropriate under the specific facts and circumstances of this case.
IV. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated that we
abused our discretion or that we misapprehended or overlooked any matter
in our Decision Denying Institution of inter partes review. Petitioner,
therefore, has not carried its burden of demonstrating that the Decision
Denying Institution should be modified. See 37 C.F.R. § 42.71(d).
V. ORDER
Accordingly, it is ORDERED that Petitioner’s Request for Rehearing
is DENIED.

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PETITIONER:

Philip W. Woo
Philip.woo.ipr@haynesboone.com

David O’Brien
David.obrien.ipr@haynesboone.com

Raghav Bajaj
Raghav.bajaj.ipr@hayesboone.com

PATENT OWNER:

Benjamin Pleune
Ben.pleune@alston.com

Ryan Koppelman
Ryan.koppelman@alston.com

Thomas Davison
Tom.davison@alston.com

James Abe
James.abe@alston.com

Caleb Bean
Caleb.bean@alston.com

Derek Neilson
Derek.neilson@alston.com

Nicholas Tsui
Nick.tsui@alston.com