Contemporary Display LLC

Patent Trials and Appeals Board

Dec 30, 2020

IPR2019-01269 (P.T.A.B. Dec. 30, 2020)

Trials@uspto.gov Paper 38
571-272-7822 Entered: December 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS INC.,
Petitioner,

v.

CONTEMPORARY DISPLAY LLC,
Patent Owner.
____________

IPR2019-01269
Patent 8,863,219 B2
____________

Before MICHAEL R. ZECHER, SHIELA F. McSHANE, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Granting Patent Owner’s Revised Motion to Amend to Cancel
Claims 1–3 and 5–7
Denying Patent Owner’s Revised Motion to Amend to Substitute
Claims 15 and 16
35 U.S.C. § 318(a)

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I. BACKGROUND
A. Background and Summary
Unified Patents Inc. (“Petitioner”) filed a Petition for inter partes
review (“IPR”) of claims 1–3 and 5–7 of U.S. Patent No. 8,863,219 B2
(Ex. 1001, “the ’219 patent”). Paper 2 (“Pet.”). Patent Owner,
Contemporary Display LLC (“Patent Owner”), filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”). Taking into account the arguments
presented in Contemporary’s Preliminary Response, we determined that the
information presented in the Petition established that there was a reasonable
likelihood that Petitioner would prevail with respect to at least one
challenged claim. Pursuant to 35 U.S.C. § 314, we instituted this inter
partes review on January 7, 2020, as to all of the challenged claims and all
grounds raised in the Petition. Paper 11 (“Dec. on Inst.”).
During the course of trial, Patent Owner filed a Motion to Amend.
Paper 15 (“Mot. Amend”). With our authorization (see Paper 19), Patent
Owner filed a Supplemental Motion to Amend (Paper 22, “Supp. Mot.
Amend”) clarifying that its proposed amendment seeks to cancel originally
challenged claims 1–3 and 5–7, propose substitute claims 15–17, and the
proposed substitution of claims is not contingent on the unpatentability of
claims 1–3 and 5–7. Petitioner filed an Opposition to Patent Owner’s
Motion to Amend. Paper 24 (“Pet. Opp.”). We issued Preliminary
Guidance on the Motion to Amend, determining that, based on the record at
that time, there was a reasonable likelihood that proposed substitute claims
15–17 were unpatentable. Paper 26 (“Prelim. Guid.”). Patent Owner filed a
Revised Motion to Amend, which included further amendments to proposed
substitute claims 15 and 16, and withdrew previously-proposed substitute
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claim 17 from consideration. Paper 27 (“Revised Mot.”). Petitioner filed an
Opposition to the Revised Motion to Amend. Paper 30 (“Pet. Opp. Rev.
Mot.”). Patent Owner filed a Reply to Petitioner’s Opposition to the
Revised Motion to Amend (Paper 33, “PO Reply”), and Petitioner filed a
Sur-reply (Paper 35, “Pet. Sur-reply”). An oral hearing was held on
November 2, 2020, and a transcript of the hearing is included in the record.
Paper 37 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the cancellation of claims
1–3 and 5–7 of the ’219 patent and the patentability of proposed substitute
claims 15 and 16. For the reasons we identify below, we grant Patent
Owner’s Revised Motion to Amend to cancel claims 1–3 and 5–7 and deny
Patent Owner’s Revised Motion to Amend to substitute claims 15 and 16
because Petitioner has demonstrated by a preponderance of the evidence that
both proposed substitute claims are unpatentable under § 103(a).
B. Related Matters
The parties indicate that the ’219 patent is involved in the following
pending litigation: Contemporary Display LLC v. Cox Communications,
Inc., No. 1:19-cv-00224 (D. Del., filed Feb. 1, 2019); Contemporary Display
LLC v. Verizon Communications Inc., No. 1:19-cv-00225 (D. Del. filed Feb.
1, 2019); and Contemporary Display LLC v. LG Electronics USA, Inc., No.
2:18-cv-00152 (E.D. Tex. filed Apr. 17, 2018). Pet. 1–2; Paper 3, 2.1

1 Patent Owner’s Mandatory Notices filed in accordance with 37 C.F.R.
§ 42.8 does not include page numbers. Paper 3. We consider the Title page
as page 1 and then proceed from there in numerical order.
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C. The ’219 Patent
The ’219 patent generally relates to an on-screen television display
menu system that allows a user to select from available input sources using a
graphical user interface. Ex. 1001, code (57). Figure 6A is illustrative of
the graphical user interface display menu.

Figure 6A portrays a display having a device selection menu that includes a
top icon row of input sources, a center icon row of the content of inputs that
includes video of one of the inputs, and a bottom icon row of user options.
Ex. 1001, 9:1–41.
Conventional television systems identify the input sources by the
television system’s fixed connectors, e.g., as HDMI [high definition
multimedia interface] or S-Video connectors. Ex. 1001, 1:37–50. However,
those connectors may be used to connect entirely different types of devices;
for example, a DVD [digital versatile disk] connector may be used to
connect a cable box rather than a DVD player, either intentionally or
unintentionally. Id. at 1:50–58. The television system of the ’219 patent can
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embed incoming videos into the graphical user interface menu that represent
the content of the signal through each connector, thus allowing the user to
select the input source that the user would like to see. Id. at 4:36–47.
Remote control commands may control the television system through its
menu system, and can control other devices in the system either directly or
through the television system. Id. at 5:35–54. The television system
automatically adapts to the type of input signal selected for display; for
example, the system may be connected to a personal computer having
software that will recognize that a certain device, such as a USB [universal
serial bus] cable, is connected. Id. at 11:57–64, code (57).
D. Challenged Claims
Petitioner originally challenged claims 1–3 and 5–7 of the ’219 patent.
See, e.g., Pet. 4–5. Patent Owner sought to cancel those claims in its Motion
to Amend, and proposed substitute claims 15–17. Mot. Amend. Patent
Owner confirmed that its request in the Motion to Amend sought to cancel
all challenged claims in the inter partes review, and that the Motion to
Amend was not contingent on the patentability of any originally challenged
claim. Supp. Mot. Amend 1. After receiving our Preliminary Guidance,
Patent Owner filed a Revised Motion to Amend, proposing substitute claims
15 and 16, and withdrawing proposed substitute claim 17 from
consideration. Revised Mot.; Ex. 2002. Patent Owner again clarified that
only substitute claims 15 and 16 as proposed in the Revised Motion to
Amend are before us, and, on a non-contingent basis, Patent Owner seeks to
cancel the remaining claims at issue in the proceeding, i.e., claims 1–3 and
5–7. Tr. 6: 19–24.
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Petitioner does not oppose Patent Owner’s non-contingent request to
cancel originally challenged claims 1–3 and 5–7 of the ’219 patent. See
generally Pet. Opp. Rev. Mot. Petitioner, however, presents arguments and
evidence that substitute claims 15 and 16, proposed by Patent Owner in its
Revised Motion to Amend, are unpatentable. Patent Owner proposes
substitution claims 15 and 16 for claims 5 and 6, respectively. Ex. 2002.
Claim 15 is reproduced below, with reference letters added in brackets for
convenience, mirroring Petitioner’s usage in its Opposition to the Revised
Motion to Amend:
15. [a] A method for on-screen managing and navigating
television system functionality and input source selection, the
method comprising:
[b] displaying non-computer based content on a display
device of a television system through the television system, [c]
wherein the television system is configured to identify an input
source of the plurality of input sources based on the input signal
from the input source, [d] wherein the display is a video content
of the content of the input source, [e] wherein each of the
plurality of input signals is unique to each of the plurality of input
sources, [f] and the television system identifies each of the
plurality of input signals by analyzing each of the plurality of
input signals, [g] wherein analyzing each of the plurality of input
signals comprises identifying an image from one of the plurality
of input signals;
[h] receiving a computer related command at the television
system;
[i] forwarding the computer command to a computer
connected to the television system; [[and]]
[j] transitioning the television system from displaying the
non-computer based content to display a computer source
content from the computer;
[k] receiving a command from the computer; and
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[l] transitioning the television system from displaying the
computer source content to display television based content.
Claim 16 is reproduced below:
16. The method of claim [[5]] 15, further comprising:
processing television and computer commands on the television
system while displaying computer source content;2
Ex. 2002, 2–4.
E. Prior Art Relied Upon
Petitioner relies upon the prior art references listed below. Pet. Opp.
Rev. Mot. Amend. 1–5.
U.S. Patent Application Publication 2006/0064719 A1 (filed Sept. 17,
2004; published Mar. 23, 2006) (“Youden,” Ex. 1004);
U.S. Patent Application Publication 2007/0137988 A1 (filed Dec. 2,
2005; published June 21, 2007) (“Yu,” Ex. 1013);
U.S. Patent Application Publication 2002/0051083 A1 (filed May 11,
2001; published May 2, 2002) (“Aratani,” Ex. 1006);
F. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of proposed substitute claims 15
and 16 on the following grounds:
Claims Challenged 35 U.S.C. §3 References
15, 16 103(a) Aratani, Youden

2 Proposed claim 16 ends in a semicolon rather than a period as required by
the Office’s longstanding procedure. See Fressola v. Manbeck, 1995 WL
656784 (D.D.C. 1995). Because we do not grant Patent Owner’s motion to
amend the claims, this typographical error is moot.
3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 103 and 112, effective
March 16, 2013. Because the application from which the ’219 patent issued
was filed before this date, the pre-AIA versions of §§ 103 and 112 apply.
Ex. 1001, codes (21), (22).
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15, 16 103(a) Aratani, Youden, Yu

II. NON-CONTINGENT MOTION TO AMEND
A. Legal Standards
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d). We must assess the patentability of proposed substitute
claims “without placing the burden of persuasion on the patent owner.”
Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017) (en banc);
see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 3‒4
(PTAB Feb. 25, 2019) (precedential). Subsequent to the issuance of Aqua
Products, the Federal Circuit issued a decision in Bosch Automotive Service
Solutions, LLC v. Matal, 878 F.3d 1027, 1040 (Fed. Cir. 2017) (“Bosch”), as
well as a follow-up order amending that decision on rehearing, that further
reiterated that patent owner does not bear the burden of persuasion in
demonstrating the patentability of proposed substitute claims. See Bosch
Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar. 15, 2018)
(Order on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, Patent
Owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, we focus on “arguments and
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theories raised by the petitioner in its petition or opposition to the motion to
amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020). In
limited circumstances, we also may justify any finding of unpatentability by
reference to evidence of record in the proceeding. Compare Lectrosonics,
Paper 15 at 4 (citing Aqua Products, 872 F.3d at 1311 (O’Malley, J.)), with
Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600,
Paper 67 at 4 (PTAB July 6, 2020) (concluding that the Board may raise a
ground of unpatentability that a petitioner did not advance, or insufficiently
developed, against substitute claims under certain rare circumstances)
(Precedential Opinion Panel decision). “Thus, [we] determine[] whether
substitute claims are unpatentable by a preponderance of the evidence based
on the entirety of the record, including any opposition made by the
petitioner.” Lectrosonics, Paper 15 at 4
Notwithstanding the foregoing, Patent Owner’s proposed substitute
claims 15 and 16 must meet the statutory requirements of 35 U.S.C. § 316(d)
and the procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper
15 at 4–8. Accordingly, Patent Owner must demonstrate: (1) the
amendment provides a claim listing; (2) the amendment proposes a
reasonable number of substitute claims; (3) the amendment responds to a
ground of unpatentability involved in the trial; (4) the proposed claims are
supported in the original disclosure (and any earlier filed disclosure for
which the benefit of filing date is sought); (5) the amendment does not seek
to enlarge the scope of the claims of the patent; and (6) the amendment does
not seek to introduce new subject matter. See 35 U.S.C. § 316(d); 37 C.F.R.
§ 42.121. We begin our analysis by addressing each requirement in turn,
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and then we address whether Petitioner demonstrates by a preponderance of
the evidence that proposed substitute claims 15 and 16 are unpatentable.
Claim Listing
The revised motion to amend includes a claim listing, as required by
37 C.F.R. § 42.121(b). Ex. 2002, 2–4; Lectrosonics, Paper 15 at 8.
Reasonable Number of Substitute Claims
“There is a rebuttable presumption that a reasonable number of
substitute claims per challenged claim is one (1) substitute claim.”
Lectrosonics, Paper 15 at 4–5 (citing 37 C.F.R. § 42.121(a)(3)). The
Petition challenges six claims, and the Revised Motion to Amend proposes
two substitute claims, which is fewer than one substitute claim per each
challenged claim. Rev. Mot. 1. Petitioner has not argued that there is an
unreasonable number of substitute claims proposed. We determine that the
number of proposed substitute claims is reasonable.
Responsive to Ground of Unpatentability
We next consider whether the proposed substitute claims respond to a
ground of unpatentability involved in this trial. Lectrosonics, Paper 15 at 5–
6. Patent Owner argues the motion to amend is responsive to the instituted
grounds insofar as “the substitute claims incorporate limitations that
distinguish over the references upon which this Inter Partes Review was
instituted.” Rev. Mot. 1, 10–12. Petitioner has not argued any issues to the
contrary. We agree that the amended language, as marked in Exhibit 2002,
addresses the references presented in the grounds of unpatentability raised in
the Petition, and are thus responsive to a ground of unpatentability involved
in this trial.
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Scope of Amended Claims
“A motion to amend may not present substitute claims that enlarge the
scope of the claims of the challenged patent.” Lectrosonics, Paper 15 at 6–7
(citing 35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii)). Patent Owner
argues that proposed substitute claim 15 is narrower in scope than originally
challenged claim 5, which it replaces. Rev. Mot. 3. Specifically, Patent
Owner states that proposed substitute claim 15 “has been amended to
explicitly recite analyzing each of the plurality of input signals, wherein
analyzing each of the plurality of input signals comprises identifying an
image from one of the plurality of input signals,” and further, that proposed
substitute claim 15 recites the features of originally challenged claim 6. Id.
Patent Owner further shows proposed substitute claim 16 contains the same
language as originally challenged claim 7, amended solely to depend from
proposed substitute claim 15. Ex. 2002, 3; Rev. Mot. 12. Petitioner has not
argued any issues to the contrary. We agree that Patent Owner has not
presented substitute claims that enlarge the scope of the originally
challenged claims of the ’219 patent.
New Matter
“A motion to amend may not present substitute claims that . . .
introduce new subject matter.” Lectrosonics, Paper 15 at 6–7 (citing
35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii)). Accordingly, “the
Board requires that a motion to amend set forth written description support
in the originally filed disclosure of the subject patent for each proposed
substitute claim, and also set forth support in an earlier filed disclosure for
each claim for which benefit of the filing date of the earlier filed disclosure
is sought.” Id. at 7 (citing 37 C.F.R. § 42.121(b)(1)–(2)). For this
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requirement, Patent Owner must cite “to the original disclosure of the
application, as filed, rather than to the patent as issued.” Id. at 8.
Patent Owner asserts that the proposed substitute claims are supported
by the originally filed disclosure of the ’219 patent. Rev. Mot. 4. With
respect to the additional language added to proposed substitute claim 15 in
the Revised Motion, “wherein analyzing each of the plurality of input
signals comprises identifying an image from one of the plurality of input
signals,” Patent Owner points to numerous passages in the originally-filed
Specification for support. Id. at 7 (citing ¶¶ 2, 29, 31, 33, 34, 38, 41, 43, 54,
64, 77).4
In its Opposition to Patent Owner’s Revised Motion to Amend,
Petitioner does not specifically argue that the added “wherein analyzing . . .”
phrase, discussed above, lacks written description. Instead, Petitioner argues
that a separate phrase, “the television system identifies each of the plurality
of input signals by analyzing each of the plurality of input signals” lacks
written description support. Pet. Opp. Rev. Mot. 23. Petitioner argues that
nearly all of the passages cited by Patent Owner for support, except for
paragraphs 30 and 41, with Patent Owner not referencing paragraph 30, are
“irrelevant, or at best, describe identification of input source only and do not
provide written description support for identification of input signals.” Id. at
23–24 (citing Ex. 1015 ¶ 110 (Second Wechselberger Decl.)). Petitioner
argues that, because Patent Owner does not rely on paragraph 30 for support
of this phrase, Patent Owner thus has not met its burden of production to

4 Patent Owner cites to Ex. 1003 for these paragraphs, which appear at
Ex. 1003, 1, 8–14, 18, 21–22, 25–26.
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make a showing that paragraph 30 provides written description for this
phrase. Id. at 24.
Petitioner argues that paragraph 41 describes displaying a thumbnail
of the content of a DVD in order to identify the DVD as an input source. Id.
at 23. Petitioner argues that the claims require an identifying of input
signals that is distinct from identifying of the input source. Id. Petitioner
thus concludes that paragraph 41 cannot provide support for both
“identifying” acts. Id. Petitioner also provides a similar argument for
paragraph 30, which Petitioner argues merely describes capturing and
displaying images from the incoming video signal for the purpose of
identifying and selecting the input source, not for identifying the signal
itself. Id. at 24–25. For those reasons, Petitioner argues that the originally-
filed disclosure that matured into the ’219 Patent lacks written description
support for the phrase “the television system identifies each of the plurality
of input signals by analyzing each of the plurality of input signals.” Id. at 25
(emphasis omitted).
In Patent Owner’s Reply to Petitioner’s Opposition, Patent Owner
directs our attention to paragraph 42 of the originally-filed application. PO
Reply 4–5. Patent Owner argues that paragraph 42 “provides additional
support for the recited portions of [proposed] substitute independent Claim
15.” Id. at 5.
Petitioner, in its Sur-reply, argues as a threshold matter that Patent
Owner fails to satisfy its burden of production in support of its proposed
amendment. Pet. Sur-reply 1 (citing Aqua Prods., 872 F.3d at 1341 (Fed.
Cir. 2017) (en banc) (Reyna, J., writing for majority) (“There is no
disagreement that the patent owner bears a burden of production in
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accordance [with] 35 U.S.C. § 316(d).”)). Id. Petitioner characterizes Patent
Owner’s Reply as consisting entirely of “naked attorney arguments,” which
it argues are not a substitute for objective evidence. Id. For this reason,
Petitioner argues that the Reply and the Revised Motion to Amend should
not be accorded any weight as to this issue.
Petitioner further argues that Patent Owner’s reliance on paragraph 42
is presented for the first time in its Reply, and should be disregarded as
untimely because the Revised Motion to Amend did not rely on paragraph
42 for written description support of any limitation in proposed substitute
claim 15. Pet. Sur-reply 6. Further, Petitioner argues that Patent Owner’s
Reply is not responsive to the Opposition because it does not address the
limitation that Petitioner identified as lacking written description therein. Id.
at 7. Petitioner argues that Patent Owner, by not addressing Petitioner’s
argument, has waived its arguments against the written description support
of that limitation. Id.5 Petitioner further argues that Patent Owner’s
arguments supporting written description conflict with Patent Owner’s
arguments contesting Petitioner’s allegation that the Youden reference
teaches that limitation, in Petitioner’s obviousness argument against

5 Petitioner refers to its own argument regarding the “wherein analyzing”
element; however, this appears to be a typographical error as Patent Owner,
not Petitioner, has addressed this element. Petitioner, in the prior paragraph
and in its Opposition, argues only that the limitation lacking written
description is the phrase, “the television system identifies each of the
plurality of input signals by analyzing each of the plurality of input signals,”
and we proceed under that understanding. Pet. Opp. Rev. Mot. 23; Sur-reply
7.
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proposed substitute claim 15. Id. at 3 (further alleging that under Patent
Owner’s argument, proposed substitute claim 15 would not be enabled).
We begin with Petitioner’s argument that Patent Owner’s Reply and
its Revised Motion to Amend should not be accorded any weight on this
issue because Patent Owner has not produced evidence to support its
positions, in accordance with its burden of production under 35 U.S.C.
§ 316(d).
The burden of production is that of going forward with evidence,
which may mean either producing additional evidence or presenting
persuasive argument based on new evidence or evidence already of record.
Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed.
Cir. 2008). In the context of a question of written description support, the
burdened party is required to produce sufficient evidence and argument to
show that all of the claim limitations are supported in the application to
which support is required to be shown. Id. For example, a patent owner
bearing the burden of production to show compliance with the written
description requirement may “cite . . . where adequate written description
could be found.” Hyatt v. Dudas, 492 F. 3d 1365, 1371 (Fed. Cir. 2007).
Here, Patent Owner has cited, for each limitation of proposed
substitute claims 15 and 16, specific paragraphs in the originally-filed
disclosure as showing support for each limitation. Rev. Mot. 4–10. The
originally-filed disclosure of the application that matured into the ’219
patent, entered in this proceeding as part of Exhibit 1003, is itself evidence
that may be relied upon. Patent Owner has not provided mere argument, but
instead, has provided evidence through citation to the originally-filed
application disclosure. Petitioner has not identified, nor are we aware of,
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any additional evidentiary burden required of Patent Owner. At oral
hearing, Petitioner was asked whether
we [the Board] could look at the specification and look at the
citations that were provided and support for these elements, and
ascertain whether or not there’s sufficient language in there that
would reasonably convey to one with ordinary skill in the art,
whether or not the support was there . . . We don’t necessarily
need an expert from either you telling us it’s not there, or them
telling it’s there, to make that determination.
Tr. 22:19–23:2 (statement of Judge Zecher).
Petitioner responded,
Your Honors, this clearly goes to the weight of the evidence. The
Patent Owner has not submitted any evidence to rebut
Petitioner’s evidence. Therefore, the question is how much
weight should be given to Patent Owner’s attorney arguments?
And other than that, we agree with you, with Your Honors.
Id. at 23:3–7 (statement of Mr. Park).
Accordingly, we are not persuaded by Petitioner’s argument that
Patent Owner fails to meet its burden of production to show that the
proposed substitute claims 15 and 16 satisfy 35 U.S.C. § 316 insofar as
Patent Owner has produced evidence to support its position. Accordingly,
we decline to accord no weight to the Patent Owner’s Reply and Revised
Motion to Amend on this issue.
Turning to the merits, the test for determining compliance with the
written description requirement is whether the disclosure of the application
as originally filed reasonably conveys to a person of ordinary skill in the art
that the inventor had possession of the claimed subject matter at the time of
filing, rather than the presence or absence of literal support in the
specification for the claim language. Ariad Pharms., Inc. v. Eli Lilly & Co.,
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598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983).
We turn first to the claim language itself. Proposed substitute claim
15 sets forth, in relevant part, the following (emphasis in italics added and
altered):
wherein the television system is configured to identify an input
source of the plurality of input sources based on the input signal
from the input source, wherein the display is a video content of
the content of the input source, wherein each of the plurality of
input signals is unique to each of the plurality of input sources,
and the television system identifies each of the plurality of input
signals by analyzing each of the plurality of input signals,
wherein analyzing each of the plurality of input signals
comprises identifying an image from one of the plurality of input
signals.
Ex. 2002, 2.
Proposed substitute claim 15 requires identification of the input
source and each of the input signals. Identification of the input source is
“based on the input signal.” Identification of the input signals are based on
“analyzing” each signal, where “analyzing” comprises identifying an image
from each signal. We agree with Petitioner that of the sections of the
originally-filed application (“the ‘801 application”) that were identified by
Patent Owner as providing support, only paragraph 41 provides relevant
disclosure. Pet. Opp. Rev. Mot. 23. We further agree with Petitioner that
the claim requires an identifying of input signals that is distinct from
identifying of the input source. Id.
However, we agree with Patent Owner that paragraph 41 of the ’801
application provides support for the identification of both input source and
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input signal, where the input signal identification comprises identifying an
image therein. Paragraph 41 states that an input source may be identified
“based on . . . identification of the device that is connected by automatic
signal sensing.” Ex. 1003, 200 (¶ 41). Paragraph 41 also states that the
television can identify the content of the input sources, such as by “an image
from the movie on the DVD.” Id. Paragraph 41 thereby describes both
identifying an input source based on the input signal from the input source
(by “automatic signal analysis”) and analyzing the input signal by
identifying an image from the input signal (e.g., by “an image from the
movie on the DVD”). Accordingly, we determine that paragraph 41 of the
’801 application provides support for an identifying of input signals, by
identifying an image, that is separate from identifying the input source.
Based upon the above discussion, and considering the entirety of the
record, we find by a preponderance of the evidence that Patent Owner’s
proposed substitute claim 15 has adequate support in the original disclosure
of the ’801 application that matured into the ’219 patent. We further find
that proposed substituted claim 16, depending from that claim, to be
supported by the original disclosure of the ’801 application. However, for
the reasons set forth in Section III, infra, we determine that proposed
substitute claims 15 and 16 are not patentable.
III. PATENTABILITY
A. Legal Standards
A claim is unpatentable under § 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.
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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 skill in
the art and (4) when in evidence, objective indicia of non-obviousness
(i.e., secondary considerations).6 Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966). We analyze the asserted grounds based on obviousness with
these principles in mind.
B. Level of Skill in the Art
Petitioner offers an assessment as to the level of skill in the art as of
the time the ’219 patent was filed. Pet. 18–19. Relying upon a Declaration
of Dr. Anthony Wechselberger (hereinafter, the “Wechselberger
Declaration”), Petitioner asserts a person of ordinary skill in the art would
have possessed a “Bachelor of Science in Electrical Engineering or
Computer Engineering, or the equivalent,” as well as “approximately two
years of experience with user interfaces as applied in the digital television or
TV set-top box related fields.” Id. (citing Ex. 1002 ¶¶ 22–26
(Wechselberger Decl.)). Patent Owner does not offer an alternative
assessment of the level of skill in the art in its Revised Motion to Amend.
See generally Revised Mot. Patent Owner has cancelled the originally
challenged claims, and proposed substitute claims 15 and 16. Id. Neither

6 In its Revised Motion to Amend and its Reply to Petitioner’s Opposition to
the Revised Motion to Amend, Patent Owner does not present arguments or
evidence of secondary considerations. See generally Revised Mot.; PO
Reply.

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party has asserted any differences in the level of skill in the relevant prior art
implicated by the Revised Motion to Amend. Accordingly, we adopt the
undisputed assessment offered by Petitioner because it is supported by the
Wechselberger Declaration and it is consistent with the ’219 patent and the
asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001) (explaining that specific findings regarding ordinary skill level are not
required “where the prior art itself reflects an appropriate level and a need
for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State
Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).
C. Claim Construction
Petitioner submits that all terms of the challenged claims should be
interpreted according to their plain and ordinary meaning. Pet. 19. In its
Revised Motion to Amend, Patent Owner did not specifically address the
construction of the claim terms. See generally Revised Mot. Patent Owner
has cancelled the originally challenged claims, and proposed substitute
claims 15 and 16. Neither party has asserted claim construction specific to
the proposed substitute claims.
The Petition was filed on June 28, 2019, after the effective date of the
rule change that replaced the broadest reasonable interpretation standard.
See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
(2019)).
Accordingly, we apply the federal court claim construction standard
that is used to construe a claim in a civil action under 35 U.S.C. § 282(b),
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construing the claim in accordance with the ordinary and customary
meaning of such claim, as understood by one of ordinary skill in the art in
the context of the patent, and the prosecution history pertaining to the patent,
as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc). “[W]e need only construe terms ‘that are in controversy, and only to
the extent necessary to resolve the controversy.’” Nidec Motor Corp., 868
F.3d at 1017 (quoting Vivid Techs, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999)). We determine that no terms require explicit
construction.
D. Asserted Obviousness over Aratani and Youden
Petitioner contends that the combination of Aratani and Youden
discloses each and every limitation of claims 15 and 16, and provides
reasoning as to why a person of ordinary skill in the art would have been
prompted to combine the teachings of these references. Pet. Opp. Rev. Mot.
5–19.7 Petitioner also relies upon a second Wechselberger Declaration to
support its positions. Ex. 1015. We begin our analysis with brief overviews
of Aratani and Youden.
Overview of Aratani
Aratani generally relates to a television monitor that operates as the
monitor for an associated computer. Ex. 1006, code (57), Fig. 1. Figure 1 is
reproduced below.

7 Although Petitioner does not specify the statute, the applicable obviousness
statute for claims of the ’219 patent, including proposed substitute claims, is
35 U.S.C. § 103(a).
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Figure 1 illustrates a computer connected to a television monitor, in
which the monitor can receive signals from a keyboard, mouse, and remote
controller, and is connected to a television antenna, computer, and additional
devices such as a DVD drive, printer, video camera, and modem. Id. ¶¶ 12,
22–27.
In Aratani, the television monitor may be operated in either a TV
mode or a computer mode. Id. ¶ 32. In computer mode, the computer
automatically recognizes the TV monitor as a USB hub and display device,
and recognizes devices connected to the TV as input/output devices of the
computer. Id. ¶¶ 32, 42.
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Overview of Youden
Youden generally relates to a method of selecting video content to be
displayed from among a plurality of video inputs. Ex. 1004, code (57). The
video content from all video inputs is simultaneously displayed, permitting a
user to select from among the inputs. Id. Figure 4 is illustrative of the user
interface display and reproduced below.

Figure 4 portrays two rows of input sources having content displayed
for each input source that is available. Id. ¶ 26.
Youden provides an exemplary embodiment in which the video
display device has six video inputs and eight video input thumbnails. Id. ¶
26, Fig. 4. The video inputs are: two radiofrequency (“RF”) video inputs
labeled “ANTENNA 1” and “ANTENNA 2,” two S-video inputs labeled “S-
VID 1” and “S-VID 2,” a composite video input labeled “COMPOSITE 1,”
and a component video input labeled “COMPONENT 1.” Id. The video
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content of the video inputs are displayed as video thumbnails TN1–TN8, in
which each of the S-video, composite video, and component video inputs is
assigned a separate thumbnail (TN3–TN6) that displays the content of the
input, if any exists. Id. ¶¶ 26–27, Fig. 4. The two RF video inputs are
displayed as four video input thumbnails, in which the first video input is
displayed as TN1 and TN8, showing the content that is being presented on
channels 3 and 4, respectively, of the first RF video input. Id. ¶ 26, Fig. 4.
The second video input is displayed as TN2 and TN7, showing the content
that is being presented on channels 3 and 4, respectively, of the second RF
video input. Id.
Analysis
Based on the fully developed trial record, we agree with Petitioner
that the combination of Aratani and Youden renders proposed substitute
claims 15 and 16 obvious. Notably, Petitioner provides claim mappings of
each individual limitation of the challenged claims to Aratani or Youden.
Pet. Opp. Rev. Mot. 5–19. We discuss below Petitioner’s contentions
regarding proposed substitute claims 15 and 16.
Petitioner’s Proffered Obviousness Challenge
The preamble of proposed substitute claim 15, denoted limitation
15[a], recites “[a] method for on-screen managing and navigating television
system functionality and input source selection.” Petitioner contends this
claim language, to the extent it is limiting, is met by Aratani’s description of
television monitor 120, wherein a user may manage an on-screen display,
navigate its functionalities, and select its inputs. Pet. Opp. Rev. Mot. 6
(citing Ex. 1006, Figs. 1, 4, ¶¶ 27, 36, 40–41; Ex. 1015 ¶¶ 18–19).
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Limitation 15[b] recites, “displaying non-computer based content on a
display device of a television system through the television system.”
Petitioner contends this claim language is met by Aratani’s description of
display device 127, wherein the display device displays television broadcasts
received through antenna and television tuner. Pet. Opp. Rev. Mot. 6–7
(citing Ex. 1006, Figs. 1–2, ¶¶ 36, 40; Ex. 1015 ¶¶ 22–23).
Limitation 15[c] recites, “wherein the television system is configured
to identify an input source of the plurality of input sources based on the
input signal from the input source.” Petitioner contends this claim language
is met by Youden’s description of a video selection and display device
determining whether an input signal is present at an input connector; e.g., by
identifying Antenna 1 based on the presence of a signal at Antenna 1’s port.
Id. at 7 (citing Ex. 1004, Fig. 4, ¶¶ 26–27; Ex. 1015 ¶ 26). Petitioner further
contends that Youden, after identifying the presence of input signals at each
connector, further analyzes the signals to determine what channel it
represents, and indicates the availability of such channels on the screen. Id.
at 7–8 (citing Ex. 1004, Fig. 4, ¶¶ 26–27; Ex. 1015 ¶¶ 27–28).
Limitation 15[d] recites, “wherein the display is a video content of the
content of the input source.” Petitioner contends this claim language is met
by Aratani’s description of television monitor 120, displaying the television
broadcast received through TV tuner 129, wherein the TV tuner corresponds
to the claimed input source and its video output corresponds to the video
content of the content of the input source. Id. at 8–9 (citing Ex. 1006 ¶ 36;
Ex. 1015 ¶¶ 31–32).
Limitation 15[e] recites, “wherein each of the plurality of input
signals is unique to each of the plurality of input sources.” Petitioner
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contends this claim language is met by Aratani’s description of input sources
of TV tuner 129 and computer 101, wherein each device provides its own
unique input signal. Pet. Opp. Rev. Mot. 9 (citing Ex. 1006, Fig. 1, ¶ 36; Ex.
1015 ¶¶ 34–35).
Limitation 15[f] recites, “the television system identifies each of the
plurality of input signals by analyzing each of the plurality of input signals.”
Petitioner contends this claim language is met by Youden’s description of its
video selection and display device, which analyzes each of the input signals
to determine what channels are available and captures and displays
thumbnails of the video content of each channel. Id. at 9–10 (citing Ex.
1004, Fig. 4, ¶¶ 26–27; Ex. 1015 ¶¶ 37–39). Petitioner further cites to
Youden’s description of an asterisk that is displayed to indicate that
additional channels are available, and permitting the user to select and
display the thumbnail video content of those additional channels. Id.
Limitation 15[g] recites, “wherein analyzing each of the plurality of
input signals comprises identifying an image from one of the plurality of
input signals.” Petitioner contends this claim language is met by Youden’s
description of analyzing each of the input signals to determine what channels
are available, if any, and then capturing thumbnails of the video content of
each of the available channels. Id. at 10–11 (citing Ex. 1004, Fig. 4, ¶¶ 26–
27; Ex. 1015 ¶¶ 41–42).
Limitation 15[h] recites, “receiving a computer related command at
the television system.” Petitioner contends this claim language is met by
Aratani’s description of TV monitor 120 entering a PC mode and displaying
content from computer 101 “when a PC key 401 of the remote controller 144
or a PC key 501 of the switch 155 is pressed.” Pet. Opp. Rev. Mot. 11
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(citing Ex. 1006, ¶ 34; Ex. 1015 ¶¶ 44). Petitioner further contends that
Aratani’s TV monitor, when in PC mode, permits the user to “control the
computer 101 by using the keyboard 142 and the mouse 143, which are
input/output devices of the TV monitor 120,” and that a signal “related to
control or interaction with a personal computer” is considered by the ‘219
patent to be a computer command. Id. at 12 (citing Ex. 1006 ¶ 52; Ex. 1001,
10:44–46; Ex. 1015 ¶¶ 45–46).
Limitation 15[i] recites, “forwarding the computer command to a
computer connected to the television system.” Petitioner contends this claim
language is met by Aratani’s description of a user requesting that the TV
monitor transition to the PC mode, by pressing PC key 401 on Remote
Controller 144, or Switch 155. Pet. Opp. Rev. Mot. 12 (citing Ex. 1006, ¶
41; Ex. 1015 ¶ 48). Petitioner further contends that Aratani’s TV monitor, in
response, turns on distributor 131 and forwards this computer command to
computer 101 in the form of signals to its interfaces, initiating a handshaking
procedure that ultimately allows computer 101 to recognize TV monitor 120
and its various peripherals, and to begin displaying its video content on
display device 127. Id. at 12–13 (citing Ex. 1006, Fig. 3 (S606, S613); ¶¶
32, 44, 48; Ex. 1015 ¶ 49). Petitioner contends that either the transmission
of signals from TV monitor to computer 101, or the transmission of signals
from peripherals to the computer through its USB interface, corresponds to
the claimed “forwarding the computer command to a computer connected to
the television system.” Id. at 13 (citing Ex. 1006 ¶¶ 32, 50–51; Ex. 1015 ¶
49–51).
Limitation 15[j] recites, “transitioning the television system from
displaying the non-computer based content to display a computer source
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content from the computer.” Petitioner contends this claim language is met
by Aratani’s description of the TV monitor transitioning from display of, for
example, video content of the TV tuner 128 on its display device 127, to
display of the video content from the computer when the TV monitor enters
the PC mode. Pet. Opp. Rev. Mot. 13–14 (citing Ex. 1006 ¶¶ 32, 49; Ex.
1015 ¶¶ 53–55).
Limitation 15[k] recites, “receiving a command from the computer.”
Petitioner contends this claim language is met by Aratani’s description of a
handshaking process initiated when the TV monitor enters the PC mode,
allowing the computer to recognize the TV monitor and its peripherals, and
begin displaying its video content on display device 127. Id. at 14 (citing its
discussion of limitation 15[h]). Petitioner further contends that during the
handshaking process, TV monitor 120 receives a series of commands, from
computer 101, such as “control data indicating that [the computer] has
recognized connection of the virtual USB hub.” Id. at 14–15 (citing Ex.
1006, Fig. 3, ¶¶ 46 (S607), 48 (S611); Ex. 1015 ¶¶ 58–60).
Limitation 15[l] recites, “transitioning the television system from
displaying the computer source content to display television based content.”
Petitioner contends this claim language is met by Aratani’s description of the
TV monitor transitioning from displaying computer video content to
displaying video content from the TV tuner. Id. at 15 (citing Ex. 1006 ¶¶ 36,
52; Ex. 1015 ¶¶ 62–64).
Proposed substitute claim 16 depends from proposed substitute claim
15 and further recites comprising “processing television and computer
commands on the television system while displaying computer source
content.” Petitioner contends this claim language is met by Aratani’s
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description of the user controlling the computer using keyboard and mouse
(computer command), and the user transitioning the TV monitor to the TV
mode using remote controller or switch key (television command), while the
TV monitor in PC mode displays video content from the computer. Pet.
Opp. Rev. Mot. 17–19 (citing Ex. 1006 ¶¶ 32, 49, 52; Ex. 1015 ¶¶ 72–74).
Turning to rationale to combine, Petitioner contends that Aratani and
Youden are analogous art to the ’219 patent, because each of Aratani,
Youden, and the ’219 patent relate to the identification, selection, and
display of video content. Id. at 15–16. Petitioner further contends that one
having ordinary skill in the art would have been motivated to apply
“Youden’s feature for analyzing input signals to identify channels embedded
in the input signals and capturing thumbnails of the video content for each
available channels, and displaying such thumbnails on the display (see
elements [15c], [15f], and [15g], above)—to Aratani’s television monitor
120.” Id. at 16 (emphases omitted). Petitioner contends that one having
ordinary skill in the art would recognize such a combination as merely
applying known techniques (Youden’s technique of analyzing input signals
to identify embedded channels and video thumbnails) to a known device
ready for improvement (Aratani’s television monitor). Id. (citing Ex. 1015 ¶
67). Petitioner further contends that Youden provides express teaching,
suggestion, and motivation to apply its technique to improve televisions not
having such capability, citing Youden’s statement that “the need to tune the
television 106 to a predetermined station in order to view video on an RF
input” confuses and frustrates viewers, because “[i]f the selected station of
the television 106 is not the correct channel, … all that will be displayed on
the television is ‘snow.’” Id. (citing Ex. 1004 ¶ 4; Ex. 1015 ¶ 68) (alteration
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in original). Petitioner cites Youden as solving such a recognized television
problem with its solution of further analyzing the input signal to identify the
available channels within and display thumbnails for increased user ease of
selecting a desired input and channel, without manually searching for them.
Id. at 17 (citing Ex. 1004, Fig. 4, ¶¶ 26–27; Ex. 1015 ¶ 68).
The only limitation that Patent Owner disputes that the asserted prior
does not teach is limitation 15[g], “wherein analyzing each of the plurality of
input signals comprises identifying an image from one of the plurality of
input signals,” which we address below. See PO Reply 1–3.
Patent Owner’s Reply
Patent Owner argues that Petitioner errs by relying on Youden to
teach “wherein analyzing each of the plurality of input signals comprises
identifying an image from one of the plurality of input signals.” PO Reply
1. Patent Owner characterizes Youden as teaching “that a television system
may identify an image after the channel is already identified.” Id. at 3.
Patent Owner points to Petitioner’s characterization of Youden as that
“Youden ‘first determines whether input signals are present at each
connector’ and ‘captures and displays thumbnails of the video content from
each channel . . . to indicate their availability.’” Id. (citing Pet. Opp. Rev.
Mot. 10). Patent Owner states that Petitioner “explicitly states that the
capture of thumbnails occurs after analyzing each signal to determine what
channels are available.” Id. (citing Pet. Opp. Rev. Mot. 10) (emphasis
omitted).
Patent Owner argues, proposed substituted “[c]laim 15 does not say
‘analyze, and then find an image.” Id. Patent Owner emphasizes the
requirements of proposed substitute claim 15 as reciting, “the television
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system identifies each of the plurality of signals by analyzing each of the
plurality of input signals, wherein analyzing each of the plurality of input
signals comprises identifying an image from one of the plurality of input
signals.” Id. (citing Mot. Amend 2).
Petitioner’s Sur-Reply
Petitioner argues that Patent Owner’s argument is inconsistent with
our prior characterization of Youden as disclosing “a video selection and
display device that … analyzes the input signal to determine which channel
it represents, and further analyzes the video signal to generate a video image
that is displayed as a thumbnail”). Pet. Sur-reply 2–3 (citing Prelim. Guid.
12). Petitioner disputes Patent Owner’s characterization of Petitioner’s
Opposition to the Revised Motion to Amend as deviating from our prior
characterization, with which Petitioner and its expert agree. Id. (citing
Pet. Opp. Rev. Mot. 10–11); Ex. 1015 ¶ 38.
Petitioner further argues that Patent Owner’s argument directed to
Youden in its Reply is not consistent with its argument on written
description in its Revised Motion to Amend. Pet. Sur-reply 3. More
specifically, Petitioner argues that, in the Revised Motion to Amend, Patent
Owner argued that the ’801 Application’s disclosure, at paragraph 41, “of
capturing images of video playback content for thumbnails provides written
description support for, and thus corresponds to, the ‘wherein analyzing’
element.” Id. (citing Rev. Mot. 7). Petitioner argues that Youden’s
disclosure of capturing images of video playback for thumbnails would also
correspond to the “wherein analyzing” element. Id. Petitioner argues that
Patent Owner’s assertion in its Reply, that Youden’s disclosure of capturing
images of video playback for thumbnails does not correspond to the
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“wherein analyzing” element, is in effect, an assertion that the “wherein
analyzing” element cannot find written description or enablement from a
disclosure of capturing images of video playback for thumbnails in its own
originally-filed disclosure. Id. at 4–5 (citing Ex. 1015 ¶¶ 91–108).
Determination
We determine that the proposed combination of Aratani and Youden
teaches or suggests proposed substitute claims 15 and 16 in the manner
proposed by Petitioner, and we adopt Petitioner’s reasoning as our own, with
the following additional explanation regarding limitation 15[g].
Limitation 15[g] recites, “wherein analyzing each of the plurality of
input signals comprises identifying an image from one of the plurality of
input signals.” Neither Patent Owner nor Petitioner have provided an
explicit construction of that phrase. See supra Section II.C. However,
Patent Owner and Petitioner have proffered interpretations as to what a
reference must disclose in order to meet that limitation.
According to Patent Owner, the plain language of the claim requires
that “‘identifying an image from one of the plurality of input signals’ is part
of the television system identifying each of the plurality of input signals.”
PO Reply 3. Patent Owner asserts that such language excludes identifying
an image “after the channel is already identified.” Id. Patent Owner relies
solely on the claim language, and not on expert testimony or the
Specification of the ’219 patent. Id.
Proposed substitute claim 15 recites the actions of the television
system in limitations 15[c], [f], [g]:
[c] wherein the television system is configured to identify an
input source of the plurality of input sources based on the input
signal from the input source . . .
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[f] and the television system identifies each of the plurality of
input signals by analyzing each of the plurality of input signals
[g] wherein analyzing each of the plurality of input signals
comprises identifying an image from one of the plurality of input
signals
In its Petition, when addressing the limitations of originally
challenged claim 1 similar to those of limitations 15[c], [f], Petitioner points
to Youden’s treatment of a signal connected to the “Antenna 1” connector,
wherein the signal may contain multiple potential channels of content.
Pet. 27–28 (citing Ex. 1004 ¶ 27, Fig. 4). Petitioner characterizes Youden
as analyzing that signal to identify, on the screen, the specific channel that
the signal is tuned to. Id. at 27. Petitioner contends that Youden identifies
the signal with respect to a specific channel of the signal on Antenna 1, and
not merely the existence of any signal of Antenna 1, to identify the signal as
“Antenna 1.” Id. In its Opposition to the Revised Motion to Amend,
addressing limitation 15[g], Petitioner points to Youden’s capture of
thumbnails of the video content of each channel. Pet. Opp. Rev. Mot. 11.
Petitioner further points to Youden as identifying the input signal by
indicating, on the screen, the specific channel next to the thumbnail image.
Id. at 10.
We determine Petitioner’s interpretation of Youden’s teaching to be
consistent with the language of proposed substitute claim 15 identified
above. Under this interpretation, Youden determines an input signal is
present, analyzes the signal to determine which channel it represents, then
identifies the input signal by indicating that channel on the screen next to an
image of the video signal from that channel. Petitioner thus finds Youden to
identify the input signal by the simultaneous display of the channel and the
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thumbnail image. Such an interpretation is consistent with Patent Owner’s
reasoning that the claims require identification of the image as part of the
identification of the input signal. PO Reply 3.
We further determine that there is no conflict in Petitioner’s
characterization of Youden for limitation 15[g] considering Patent Owner’s
indication of support in the originally-filed disclosure. Patent Owner points,
inter alia, to paragraph 41 as providing support for claim limitations 15 [c],
[f], [g]. Rev. Mot. 5–7. In the oral hearing, Patent Owner also characterized
the identifying of the signal as requiring that analyzing the input signal
includes, but not necessarily being based on, identifying an image.
Tr. 12:14–17 (“the proposed amendment does not require that the input
signal is identified based on an image. It just recites that analyzing the input
signal includes identifying an image.”) (Statement of Mr. Johnson). We
determine Petitioner’s characterization is also consistent with Youden’s
identification of the input signal by indicating the channel next to an image.
Accordingly, based on the record of the proceeding, Petitioner has
demonstrated by a preponderance of the evidence that proposed substitute
claims 15 and 16 would have been obvious over the combined teachings of
Aratani and Youden.
E. Asserted Obviousness over Aratani, Youden and Yu
Petitioner also contends that proposed substitute claims 15 and 16 of
the ’219 patent are unpatentable as being obvious under 35 U.S.C. § 103(a)
over the combined teachings or suggestions of Aratani, Youden, and Yu.
Pet. Opp. Rev. Mot. 19–22. Petitioner contends that the combination of
Aratani, Youden, and Yu discloses each and every limitation of proposed
substitute claims 15 and 16, and provides reasoning as to why a person of
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ordinary skill in the art would have been prompted to combine the teachings
of these references. Id. Petitioner also relies upon the second
Wechselberger Declaration to support its positions. Ex. 1015. We begin our
analysis with a brief overview of Yu.
Overview of Yu
Yu generally relates to a method of controlling a switching
mechanism via a computer to match an audio/visual mode selected via the
computer system. Ex. 1013 ¶ 6. Figure 2 is reproduced below.

Figure 2 illustrates a configuration of audio/visual devices having
connections coupled via a personal computer system-controlled internal
switching mechanism. Id. ¶ 10. The computer is capable of switching
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different output sources to different inputs to match a selected configuration.
Id. ¶ 6.
Analysis
Based on the fully developed trial record, we agree with Petitioner
that the combination of Aratani, Youden, and Yu renders proposed substitute
claims 15 and 16 obvious. Notably, Petitioner provides claim mappings of
each individual limitation of the challenged claims to Aratani, Youden, or
Yu. Pet. Opp. Rev. Mot. 19–21. We discuss below Petitioner’s contentions
regarding claims 15 and 16.
Petitioner’s Proffered Combination
Petitioner relies upon Aratani and Youden for each of the limitations
of proposed substituted claims 15 and 16 as presented in the prior ground,
except that Petitioner relies upon Yu for the teaching of limitations 15[k],
[l]. Pet. Opp. Rev. Mot. 19–21.
With respect to limitation 15[k], “receiving a command from the
computer,” Petitioner points to Yu’s description of computer 302 that may
emit control signals to automatically turn on a television and change the
television’s video mode to the required input. Id. at 19–20 (citing Ex. 1013,
Fig. 3, ¶ 31; Ex. 1015 ¶¶ 77–78).
With respect to limitation 15[l], “transitioning the television system
from displaying the computer source content to display television based
content,” Petitioner points to Yu’s description, “[i]f the user decides to
watch or record television, the user selects a TV (and/or recording) mode,
and the PC switches the video and audio for TV/recording functionality).”
Id. at 20 (citing Ex. 1013, Fig. 3, ¶ 27; Ex. 1015 ¶¶ 80–81). Petitioner
contends that the claim does not require the transitioning to be performed by
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the television system, and therefore, Yu’s transitioning performed by the
computer teaches that limitation. Id. at 20–21.
Turning to rationale to combine, Petitioner contends that Aratani and
Yu are analogous art to the ’219 patent. Id. at 21. Petitioner contends that
both Aratani’s and Yu’s systems relate to the identification, selection, and
display of video content. Id. (citing Ex. 1004, ¶¶ 17–20, 27; Ex 1013,
Abstr., Figs. 2–3, ¶¶ 27–33). Petitioner contends that the ’219 patent also
relates to the identification, selection, and display of video content, and
therefore, Aratani and Yu are analogous art. Id. at 21–22. Petitioner further
contends that one having ordinary skill in the art would have been motivated
to apply Yu’s cited teachings to Aratani because Yu “expressly states that
doing so would provide users with the flexibility of controlling the television
display from a computer, which ‘can provide a rich UI experience that is far
more sophisticated than on-screen menus and the like those provided by
conventional AV devices.’” Id. at 22 (citing Ex. 1013 ¶ 43; Ex. 1015 ¶ 85)
(emphasis omitted).
Patent Owner’s Revised Motion to Amend and Reply
Patent Owner argues that Yu does not disclose transitioning the
television system from displaying the computer source content to display
television content, except as performed by Yu’s computer. Rev. Mot.
Amend. 11–12 (citing Ex. 1013, Fig. 2, ¶¶ 27–31). Patent Owner does not
further discuss this element in its Reply.
Petitioner’s Sur-Reply
Petitioner does not further discuss this issue in its Sur-reply.
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Determination
We determine that the proposed combination of Aratani, Youden, and
Yu teaches or suggests proposed substitute claims 15 and 16 in the manner
proposed by Petitioner, and we adopt Petitioner’s reasoning as our own, with
the following additional explanation regarding limitation 15[l]. Patent
Owner does not explain why the transitioning recited in limitation 15[l] must
be performed by the computer. Patent Owner does not suggest a meaning
for that term outside its plain meaning, or provide evidence as to what one
having ordinary skill in the art would consider the term to mean, or how the
term should be interpreted in light of the Specification of the ’219 patent.
Accordingly, we review the term under its plain meaning, in which claim
proposed substitute 15 recites a “method comprising . . . transitioning the
television system from displaying the computer course content to display
television based content.” This claim does not specify the entity that
performs the transitioning step, and we agree with Petitioner that the plain
language of the claim permits the transitioning to be performed by the
computer.
Accordingly, based on the record of the proceeding, Petitioner has
shown by a preponderance of the evidence that the subject matter of
proposed substitute claims 15 and 16 would have been obvious over the
combined teachings of Aratani, Youden, and Yu.

IV. CONCLUSIONS
Pursuant to Patent Owner’s non-contingent request, we cancel claims
1–3 and 5–7. We, however, deny Patent Owner’s request to amend the ’219
patent to add proposed substitute claims 15 and 16 because Petitioner has
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Patent 8,863,219 B2

39
demonstrated by a preponderance of the evidence that both claims are
unpatentable under § 103(a) as obvious over the combined teachings of
Aratani and Youden, and as obvious over the combined teachings of Aratani,
Youden, and Yu.8 A summary of our conclusions is set forth in the table
reproduced below.

Motion to Amend Outcome Claims
Original Claims Cancelled by Amendment 1–3, 5–7
Substitute Claims Proposed in the Amendment 15, 16
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 15, 16
Substitute Claims: Not Reached

V. ORDER
Accordingly, it is
ORDERED Patent Owner’s Revised Motion to Amend is granted as
to its request to cancel claims 1–3 and 5–7 of the ’219 patent;

8 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Patent 8,863,219 B2

40
FURTHER ORDERED that Patent Owner’s Revised Motion to
Amend is denied as to its request to enter proposed substitute claims 15 and
16; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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Patent 8,863,219 B2

41
PETITIONER:

David M. Tennant
WHITE & CASE LLP
dtennant@whitecase.com

Ashraf Fawzy
Jessica L.A. Marks
UNIFIED PATENTS INC.
afawzy@unifiedpatents.com
jessica@unifiedpatents.com

PATENT OWNER:

Benjamin R. Johnson
Jeffrey G. Toler
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
bjohnson@mbhb.com
toler@mbhb.com