Universal Electronics, Inc.

Patent Trials and Appeals Board

Nov 10, 2020

IPR2020-01012 (P.T.A.B. Nov. 10, 2020)

Trials@uspto.gov Paper 9
571-272-7822 Date: 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.
____________

IPR2020-01012
Patent 7,589,642 B1
____________

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

BOUCHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)
Denying Motion for Joinder
35 U.S.C. § 315(c); 37 C.F.R. § 42.122

Roku, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
§§ 311–319 to institute an inter partes review of claims 1, 2, 5–7, 19, and 20
of U.S. Patent No. 7,589,642 (Ex. 1001, “the ’642 patent”). Paper 1 (“Pet.”).
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The Petition involves the same parties and the same patent at issue in an
instituted trial proceeding in IPR2019-01612 (“the related IPR”).
Concurrent with its Petition, Petitioner also filed a Motion for Joinder with
IPR2019-01612. Paper 2 (“Mot.”). Universal Electronics, Inc. (“Patent
Owner”) filed both a Preliminary Response and an Opposition to Petitioner’s
Joinder Motion. Papers 8 (“Prelim. Resp.”), 6 (“Opp.”). With our
authorization, Petitioner filed a Reply to Patent Owner’s Opposition. Paper
7 (“Reply”).
For the reasons set forth below, we deny both the Petition and the
Motion for Joinder.

I. BACKGROUND
A. The ’642 Patent
The ’642 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.” Ex. 1001, 1:6–9. 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 1:25–28. A set of key codes
associated with a particular electronic device is referred to as a “codeset.”
Id. at 1:23–25. 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 1:39–47. Accordingly, the inventor of the ’642 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
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associated with the selected electronic consumer device to be stored on the
remote control device.” Id. at 1:51–55.
Figure 1 of the ’642 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 3:1–3. 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 3:5–8; 3:18–21, 3:27–28. With remote control device 11, a user
responds to on-screen displays 15 of television set 14, generated by key code
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generator device 12, “to step through a sequence of menu screens to identify
the codeset corresponding to the device that is to be controlled.” Id. at 3:12–
16, 3:27–33. 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 3:27–35.
An alternative embodiment uses an “autoscan functionality” in which
the user is “prompted by successive screens on display 15 to push the power-
on key of remote control device 11 multiple times.” Id. at 7:60–66. As the
user repeatedly presses the power-on key, “key code generator device 12 in
turn generates key codes using different codesets until the electronic
consumer device performs a desired function,” such as turning on. Id. at
8:6–10. The user is prompted to stop pressing the power-on key once the
user sees the desired function being performed by first electronic consumer
device 13. Id. at 8:10–13. “When the user stops pressing the power-on key,
then the key code generator device 12 identifies the codeset of the last
transmitted key code to be the codeset used by the electronic consumer
device.” Id. at 8:15–18.
The ’642 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 8:32–35.
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 8:35–43.
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
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key code signal 19.” Id. at 4:35–37. Figure 5 of the ’642 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 4:66–67. 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 the appropriate
electronic consumer device, such as VCR 13, in the form of second key code
signal 22. Id. at 5:37–44. 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 5:64–6:1, 8:6–
18.

B. Illustrative Claim
Independent claim 1 is illustrative of the challenged claims and is
reproduced below.
1. A method comprising:
(a) receiving a keystroke indicator signal from a remote
control device, wherein the keystroke indicator signal indicates
a key on said remote control device that a user has selected;
(b) generating a key code within a key code generator
device using the keystroke indic[a]tor signal;
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(c) modulating said key code onto a carrier signal,
thereby generating a key code signal; and
(d) transmitting said key code signal from said key code
generator device to said remote control device.

Ex. 1001, 10:11–21.

C. Evidence
Petitioner relies on the following references:
Mishra US 2001/0005197 A1 June 28, 2001 Ex. 1005
Dubil US 8,132,105 B1 Mar. 6, 2012 Ex. 1006
Rye US 2004/0080428 A1 Apr. 29, 2004 Ex. 1007

In addition, Petitioner relies on a Declaration by Samuel H. Russ,
Ph.D. Ex. 1003.

D. Asserted Grounds of Unpatentability
Petitioner challenges claims 1, 2, 5–7, 19, and 20 on the following
grounds. Pet. 3.
Claim(s)
Challenged
35 U.S.C. §1 References
1, 6, 7, 19, 20 103(a) Mishra, Dubil
2, 5 103(a) Rye, Dubil

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended various provisions of 35 U.S.C. Because
the ’642 patent was filed before March 16, 2013 (the effective date of the
relevant amendment), the pre-AIA versions of those provisions apply.
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E. Real Parties in Interest
The parties identify only themselves as real parties in interest.
Pet. 52; Paper 4, 1.
F. Related Matters
Both parties identify Universal Electronics, Inc. v. Roku, Inc.,
No. 8:18-cv-01580 (C.D. Cal.) (“the related litigation”) as involving the
’642 patent. Pet. 52; Paper 4, 1.
The parties additionally identify the following proceedings as
involving the ’642 patent: (1) Universal Electronics Inc. v. Funai Electric
Co., No. 8:20-cv-0700 (C.D. Cal.); (2) Universal Electronics Inc. v. Funai
Electric Co., No. 8:20-cv-0701 (C.D. Cal.); (3) Universal Electronics Inc. v.
TCL Electronics Holdings Ltd., No. 8:20-cv-0704 (C.D. Cal.); (4) Universal
Electronics Inc. v. TCL Electronics Holdings Ltd., No. 8:20-cv-3328 (C.D.
Cal.); (5) Universal Electronics Inc. v. Hisense Co., No. 8:20-cv-0696 (C.D.
Cal.); and (6) Certain Electronic Devices, Including Streaming Players,
Televisions, Set Top Boxes, Remote Controllers, and Components Thereof,
Inv. No. 337-TA-1200 (ITC). Pet. 52–53; Paper 4, 1.
The ’642 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, IPR2019-01613,
IPR2019-01614, IPR2019-01615, IPR2019-01619, IPR2019-01620,
IPR2019-01621, IPR2020-00952, IPR2020-00953, and IPR2020-00951.
See Pet. 53; Paper 4, 1–2. The parties also note that the following
applications claim the benefit of the filing date of the ’642 patent: U.S.
Patent Appl. No. 12/462,526 (now U.S. Patent No. 8,004,389); U.S. Patent
Appl. No. 13/068,820 (now U.S. Patent No. 9,355,553); U.S. Patent Appl.
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No. 15/153,905 (now U.S. Patent No. 9,911,325); U.S. Patent Appl.
No. 15/864,339; and U.S. Patent Appl. No. 16/057,544. Pet. 53; Paper 4, 2–
3.

II. 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 ’642 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 a brand new IPR petition that has been time-barred for over eight
months”).
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 also 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
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38 at 4 (PTAB Mar. 13, 2019)). In arguing that Proppant controls and
allows joinder of 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. 5–8; 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.

III. 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:

Jon Wright
Lestin Kenton
Daniel Block
Tim Tang
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
Jwright-ptab@sternekessler.com
Lkenton-ptab@sternekessler.com
Dblock-ptab@sternekessler.com
Ttang-ptab@sternekessler.com

PATENT OWNER:

Benjamin Pleune
Ryan Koppelman
Thomas Davison
H. James Abe
Caleb Bean
Derek Neilson
Nicholas Tsui
ALSTON & BIRD LLP
Ben.pleune@alston.com
Ryan.koppelman@alston.com
Tom.davison@alston.com
James.abe@alston.com
Caleb.bean@alston.com
Derek.neilson@alston.com
Nick.tsui@alston.com

James J. Lukas, Jr.
Gary R. Jarosik
Benjamin P. Gilford
GREENBERG TRAURIG, LLP
lukasj@gtlaw.com
jarosikg@gtlaw.com
gilfordb@gtlaw.com