Universal Electronics, Inc.

Patent Trials and Appeals Board

May 13, 2021

IPR2019-01595 (P.T.A.B. May. 13, 2021)

Trials@uspto.gov Paper 15
571-272-7822 Date: May 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ROKU, INC.,
Petitioner,
v.
UNIVERSAL ELECTRONICS, INC.,
Patent Owner.

IPR2019-01595
Patent 8,015,446 B2

Before PATRICK M. BOUCHER, MINN CHUNG, and
RUSSELL E. CASS, 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 Request for Rehearing (Paper 12,
“Request” or “Req.”) of the Decision (Paper 11, “Dec.”), in which, based on
the information presented, inter alia, in the Petition (Paper 2, “Pet.”), we
denied institution of an inter partes review of claims 1 and 2 (the
“challenged claims”) of U.S. Patent No. 8,015,446 B2 (Ex. 1001, “the ’446
patent”).1 In its Request, Petitioner contends the Decision misapprehended
or overlooked 37 C.F.R. § 42.108(c) as well as applicable Federal Circuit
precedent in concluding that the challenged claims were entitled to their
earliest claimed priority date. See Req. 1–2. The Request also asserts the
Decision misapprehends the language of the challenged claims, the
teachings of the references Darbee and Golender, the Petition’s motivation
to combine, and applicable Federal Circuit precedent in finding that a person
of ordinary skill in the art would not have been motivated to combine the
teachings of Darbee and Golender. See id. at 8.
As explained below, we have considered the arguments presented by
Petitioner in its Request for Rehearing, but discern no reason to modify the
Decision. Consequently, Petitioner’s Request for Rehearing is denied.
II. STANDARD OF REVIEW
“The burden of showing a decision should be modified lies with the
party challenging the decision,” and the challenging party “must specifically
identify all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was previously addressed” in a

1 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 14 (Order)).
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paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing
of our Decision denying institution of trial based on 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). Thus, a request for rehearing is
not an opportunity merely to disagree with the Board’s assessment of the
arguments or weighing of the evidence, or to present new arguments or
evidence that could have been presented in the Petition.
With these principles in mind, we address the arguments presented in
Petitioner’s Request.
III. ANALYSIS
A. Arguments in the Request Regarding the Priority Date of the Challenged
Claims
We first consider Petitioner’s argument that the Decision
misapprehended or overlooked 37 C.F.R. § 42.108(c) and applicable Federal
Circuit precedent in concluding that the challenged claims were entitled to
their earliest claimed priority date. See Req. 1–7.
1. Legal Background
As discussed in the Decision, “a patent application is entitled to the
benefit of the filing date of an earlier filed application only if the disclosure
of the earlier application provides support for the claims of the later
application, as required by 35 U.S.C. § 112.” Dec. 25 (quoting PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008)). As also
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explained in the Decision, the test for determining compliance with the
written description requirement under 35 U.S.C. § 112 is whether the
original disclosure of the earlier-filed application reasonably would have
conveyed to a person of ordinary skill in the art that the inventor had
possession of the claimed subject matter at the time of the earlier-filed
application. Id. (citing Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc)). We further explained that although the
exact terms appearing in the claim “need not be used in haec verba” in the
specification of an application to provide adequate written description for
the claimed subject matter, the specification of the earlier-filed application
“must contain an equivalent description of the claimed subject matter.” Id.
(citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997)).
As described in the Decision, the parties’ dispute over the priority date
of the challenged claims of the ’446 patent centered on whether the relevant
priority applications of the ’446 patent (i.e., the ’020 provisional (Ex. 1004),
the ’727 application (Ex. 1011), and the ’442 application (Ex. 1012))
provided adequate written description for the limitation of claim 1 (the “User
Action Limitation”) reciting
storing within a memory of the controlling device data captured
during operation of the controlling device, the data being
representative of . . . an action occurring within the remote
control application of the controlling device resulting from the
user interaction with the user interface element of the controlling
device.
Dec. 25–26 (emphasis added).
As outlined in the Decision, Petitioner in the Petition acknowledged
that the disclosures in the priority applications regarding an event journal
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that contains a log of user actions, including the “most recently viewed
channels,” describe “storing . . . data representative of a user interaction with
a user interface element . . . and an action occurring within the remote
control application.” Id. at 26–27 (emphasis added) (citing Pet. 11 (citing
Ex. 1004, 11, 22)). The Petition argued, however, that there is no disclosure
in the priority applications that the described action “result[s] from the user
interaction with the user interface element.” Id. at 27 (citing Pet. 11–13).
Patent Owner, on the other hand, argued that
a person of ordinary skill in the art would understand that the
Petitioner-cited portions of the priority applications describe the
subject matter of “an action occurring within the remote control
application of the controlling device resulting from the user
interaction with the user interface element of the controlling
device.”
Id. at 27–28 (emphases added) (citing Prelim. Resp. 19).
As described in the Decision (see id. at 28–30), Patent Owner’s
declarant, Mr. Bear, testified in his Declaration (Ex. 2001, “Bear
Declaration”) that a person of ordinary skill in the art would have
understood from the disclosures in the priority applications about journal
data including the “most recently viewed channels” that the event journal
contains data representing user selection of channels and the system action
of tuning to the user selected channels. See Ex. 2001 ¶¶ 111–119 (citing
Ex. 1004, 11, 22, 70, 85; Ex. 1011, 56–57, 11:9–15, 19:15–21, 67:3–11;
Ex. 1012, 46–47, 9:1–8, 15:11–17, 55:21–56:2). Mr. Bear also cited
Figure 4 and related descriptions in the ’020 provisional and testified that a
person of ordinary skill in the art would have understood that “the event
journal includes the mapping from ‘User Input’ to ‘Internal Commands’
performed by the system,” and thus, the ’020 provisional “discloses storing
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data that is in response or resulting from user interaction.” Ex. 2001 ¶¶ 120–
122; see Dec. 30–32 (discussing Patent Owner’s arguments and Mr. Bear’s
testimony regarding Figure 4 and related descriptions in the ’020
provisional) (citing Prelim. Resp. 19–20; Ex. 2001 ¶¶ 120–122).2 In
addition, Mr. Bear discussed “a table showing the user action and the
associated system response” described in the ’020 provisional and testified
that the cited disclosures would have conveyed to a person of ordinary skill
in the art the subject matter of “an action occurring within the remote control
application of the controlling device resulting from the user interaction with
the user interface element of the controlling device” recited in claim 1.
Ex. 2001 ¶¶ 126–127 (citing Ex. 1004, 13; reproducing a table in the
“Stimulus / Response Sequence” section of the ’020 provisional); see
Dec. 33 (discussing Patent Owner’s arguments and Mr. Bear’s testimony
regarding the “Stimulus / Response Sequence” table in the ’020 provisional)
(citing Prelim. Resp. 24–25; Ex. 2001 ¶¶ 126–127; Ex. 1004, 13).
Considering the arguments and evidence presented by Petitioner and
Patent Owner, the Decision determined that a person of ordinary skill in the
art would have understood that the priority applications describe the subject
matter of the User Action Limitation recited in claim 1, including the recited
subject matter of “an action occurring within the remote control application
of the controlling device resulting from the user interaction with the user
interface element of the controlling device.” Dec. 34–35. Accordingly,
based on the record presented, the Decision determined that the challenged

2 As discussed in the Decision, Patent Owner argued that the ’727
application and the ’442 application each provide essentially the same
disclosures. Dec. 30 n.14 (citing Prelim. Resp. 19–20 (citing Ex. 1011,
16:8–12, Fig. 18; Ex. 1012, 12:26–30, Fig. 18)).
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claims are entitled to the benefit of the earlier filing date of the ’020
provisional. Id. at 36–37.
2. Petitioner’s Arguments in the Request
In its Request, Petitioner contends that “compliance with the ‘written
description’ requirement of §112 is a question of fact” (Req. 1 (emphasis by
Petitioner) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991)) and that the Decision misapprehended or overlooked 37 C.F.R.
§ 42.108(c), which provided that when “deciding whether to institute an
inter partes review,” “a genuine issue of material fact created by [a patent
owner’s testimonial evidence] will be viewed in the light most favorable to
the petitioner solely for purposes of deciding whether to institute an inter
partes review” (id. at 1–2 (quoting 37 C.F.R. § 42.108(c)3 (emphasis by
Petitioner)) (citing Yamaha Golf Car Co. v. Club Car, LLC, IPR2017-02141,
Paper 21 at 11–12 (PTAB June 26, 2018)). The Request asserts that “the
Board’s Decision misapprehends the applicable framework for institution
and credits Patent Owner’s testimonial evidence, and only Patent Owner’s
testimonial evidence, throughout [its] priority date analysis to Petitioner’s
detriment.” Id. at 2 (emphasis in original). The Request contends that the
Decision “completely overlook[ed]” the testimony from Petitioner’s
declarant, Dr. Medvidovic, regarding the priority of the challenged claims.
Id. at 4. The Request further asserts:

3 37 C.F.R. § 42.108 has since been revised to remove the above-quoted
language regarding the presumption in favor of the petitioner, effective
January 8, 2021. See PTAB Rules of Practice for Instituting on All
Challenged Patent Claims and All Grounds and Eliminating the
Presumption at Institution Favoring Petitioner as to Testimonial Evidence,
85 Fed. Reg. 79120, 79120, 79122, 79129 (Dec. 9, 2020).
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[O]n the disputed issue of material fact concerning whether the
priority applications provided adequate written description
support for claim 1, Patent Owner’s testimonial evidence created
a “genuine issue of material fact,” and instead of viewing this
issue “in the light most favorable to the petitioner,” the Board
viewed Patent Owner’s testimonial evidence and performed its
analysis in a light most favorable to Patent Owner. The Board
misapprehended or overlooked the applicable precedent and
regulation, and on at least this basis, reconsideration of the
Decision is warranted.
Id. at 5 (emphasis in original).
As discussed below, the record shows that the Decision did not
misapprehend or overlook 37 C.F.R. § 42.108(c). The mere fact that Dr.
Medvidovic provided testimony different from the testimony of Mr. Bear
does not by itself raise a genuine issue of material fact. See Mortgage
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed.
Cir. 2016) (“The mere existence in the record of dueling expert testimony
does not necessarily raise a genuine issue of material fact.”). As the Request
acknowledges, Dr. Medvidovic in his Declaration (Ex. 1010, “Medvidovic
Declaration”) testified that the subject matter of the User Action Limitation
is “neither expressly disclosed [in] nor necessarily follows from” the
descriptions in the priority applications about event journal data. Req. 3
(emphases added) (citing Ex. 1010 ¶¶ 57–62). As discussed above,
however, the test for determining compliance with the written description
requirement under 35 U.S.C. § 112 is whether the original disclosure of the
earlier-filed application reasonably would have conveyed to a person of
ordinary skill in the art that the inventor had possession of the claimed
subject matter at the time of the earlier-filed application. Ariad Pharm., 598
F.3d at 1351. The record shows that Dr. Medvidovic did not provide any
testimony in his Declaration as to what the disclosures in the priority
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applications reasonably would have conveyed to a person of ordinary skill in
the art. See Ex. 1010 ¶¶ 53–63. Nor did Dr. Medvidovic explain adequately
in his Declaration why the disclosures in the priority applications would not
reasonably have conveyed to a person of ordinary skill in the art the subject
matter of the User Action Limitation. See id.
The Request asserts that although the Decision repeatedly cites and
quotes Mr. Bear’s testimony on what a “person of ordinary skill in the art
would understand” (Req. 5), “there is nary mention in the Board’s Decision
of Dr. Medvidovic’s testimony” regarding the priority of the challenged
claims, and, therefore, the Board’s Decision “completely overlooks Dr.
Medvidovic’s testimony, perhaps misapprehending, and in any case
sidestepping, the requirement that a genuine issue of material fact created by
a conflict in testimonies ‘be viewed in the light most favorable to the
petitioner solely for purposes of deciding whether to institute an inter partes
review’” (id. at 4) (citing 37 C.F.R. § 42.108(c)).
We could not have cited any testimony from Dr. Medvidovic on the
issue upon which the priority determination turns—what the priority
applications reasonably would have conveyed to a person of ordinary skill in
the art—because Dr. Medvidovic did not provide any testimony on that
issue. And we did not overlook or misapprehend any testimony of
Dr. Medvidovic regarding what the priority applications reasonably would
have conveyed to a person of ordinary skill in the art because we could not
have overlooked or misapprehended any testimony that was not presented in
the Medvidovic Declaration. As discussed above, Dr. Medvidovic’s
testimony based on what is expressly disclosed in or necessarily follows
from the disclosures of the priority applications was insufficient because
Dr. Medvidovic did not explain adequately why the disclosures in the
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priority applications would not reasonably have conveyed to a person of
ordinary skill in the art the subject matter of the User Action Limitation.
Thus, Dr. Medvidovic’s testimony was insufficient to raise a genuine
issue of material fact on the issue of what the priority applications
reasonably would have conveyed to a person of ordinary skill in the art.
Although Patent Owner’s declarant, Mr. Bear, provided detailed testimony
and explanations regarding how a person of ordinary skill in the art would
have understood the priority applications to describe the subject matter
recited in the User Action Limitation (see Ex. 2001 ¶¶ 111–122, 126–127),
Dr. Medvidovic did not provide adequate testimony or explanations to the
contrary on the issue (see Ex. 1010 ¶¶ 53–63).
In addition, although Mr. Bear also testified as to how Figure 4 and
the “Stimulus / Response Sequence” table described in the ’020 provisional
would have conveyed to a person of ordinary skill the subject matter of “an
action occurring within the remote control application of the controlling
device resulting from the user interaction with the user interface element of
the controlling device” recited in claim 1 (see Ex. 2001 ¶¶ 126–127), Dr.
Medvidovic did not provide any testimony on these disclosures (see
Ex. 1010 ¶¶ 53–63). Thus, Dr. Medvidovic’s testimony did not raise and
could not have raised a genuine issue of material fact on whether the
disclosures additionally discussed by Mr. Bear would have conveyed to a
person of ordinary skill the subject matter of the User Action Limitation.
The Request also contends that our Decision overlooked Dr.
Medvidovic’s background and qualifications, which are “directly relevant to
subject matter of his testimony.” Req. 2, 4 n.2 (citing Ex. 1010 ¶¶ 7–25).
We were not, however, required to accept Dr. Medvidovic’s testimony
merely because Petitioner offered it. See Skky, Inc. v. MindGeek, s.a.r.l.,
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859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board was not required to credit
expert evidence simply because [a party] offered it) (citing In re Ethicon,
Inc., 844 F.3d 1344, 1352 (Fed. Cir. 2017); 37 C.F.R. § 42.65(a)). Dr.
Medvidovic’s qualifications, impressive as they may be, do not by
themselves make Dr. Medvidovic’s testimony persuasive or sufficient to
raise a genuine issue of material fact. As discussed above, based on the
record presented, we found Dr. Medvidovic’s testimony to be insufficient to
raise a genuine issue of material fact because Dr. Medvidovic did not
sufficiently address the issue of what the priority applications reasonably
would have conveyed to a person of ordinary skill in the art, and because he
did not adequately address or discuss the relevant disclosures in the priority
applications, including Figure 4 and the “Stimulus / Response Sequence”
table described in the ’020 provisional.
Next, the Request notes that the Decision adopted Petitioner’s
definition of a person of ordinary skill in the art (POSITA) as a person
having “a bachelor’s degree in electrical engineering or computer
engineering, and two to three years of work experience in software
programming” (Req. 5 (citing Dec. 8–9)) and asserts that “the record does
not establish that Mr. Bear is capable of opining from the perspective of a
POSITA as defined in this proceeding” because Mr. Bear does not have a
degree in electrical engineering or computer engineering. Id. at 5–6 (citing
Ex. 2001 ¶¶ 6–31). The Request thus contends that “the Decision’s
wholesale adoption of Mr. Bear’s testimony . . . cannot meet the ‘in the light
most favorable to the petitioner’ standard set by §42.108(c).” Id. at 6.
Under Petitioner’s definition of the level of ordinary skill in the art,
however, “less education can be remedied with additional work experience
(e.g., 5–6 years).” Pet. 7 (citing Ex. 1010 ¶¶ 64–67). As stated in the Bear
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Declaration, Mr. Bear’s work experience includes at least 9 years of
computer software programming using a variety of coding languages, such
as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2001
¶¶ 10–12. Thus, Mr. Bear is qualified to testify from the perspective of a
person of ordinary skill in the art under Petitioner’s definition of a person of
ordinary skill in the art.
As discussed in the Decision, although we did not find the parties’
proposals for the level of ordinary skill in the art to be materially different,
to the extent the testimony from the parties’ declarants on the level of
ordinary skill in the art raised a genuine issue of material fact, we adopted
and applied Petitioner’s definition for purposes of the Decision, being
mindful of the rule that “a genuine issue of material fact created by such
testimonial evidence will be viewed in the light most favorable to the
petitioner solely for purposes of deciding whether to institute an inter partes
review.” Dec. 9 (citing 37 C.F.R. § 42.108(c)). Thus, the record shows that,
under Petitioner’s definition of the level of ordinary skill in the art adopted
in consideration of § 42.108(c), the Decision appropriately credited
Mr. Bear’s testimony on what the priority applications reasonably would
have conveyed to a person of ordinary skill in the art.
In sum, we conclude, contrary to Petitioner’s arguments in the
Request, there was no genuine issue of material fact raised by Dr.
Medvidovic’s testimony on the priority of the challenged claims. We did
not overlook or misapprehend any testimony of Dr. Medvidovic regarding
what the priority applications reasonably would have conveyed to a person
of ordinary skill in the art. Rather, we considered Dr. Medvidovic’s
testimony presented in the Medvidovic Declaration but found it insufficient
to raise a genuine issue of material fact on the issue upon which the priority
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determination turns in this case—whether the disclosures in the priority
applications would have conveyed to a person of ordinary skill the subject
matter of the User Action Limitation.
B. Arguments in the Request Regarding the Motivation to Combine
Darbee and Golender
We next turn to Petitioner’s assertion in the Request that the Decision
misapprehended the language of the challenged claims, the teachings of the
references Darbee and Golender, the Petition’s motivation to combine, and
applicable Federal Circuit precedent in finding that a person of ordinary skill
in the art would not have been motivated to combine the teachings of Darbee
and Golender. See Req. 8–15.
1. Background
As discussed in the Decision, the Petition cited contemporaneous prior
art, Gopalan (Ex. 1007), in support of Petitioner’s argument on the
motivation to combine Darbee and Golender. Dec. 43 (citing Pet. 24).
According to the Petition, Gopalan “recognizes that ‘embedded systems’
such as those that ‘deal with real-time issues’ and execute on devices such as
‘cellular phones’ or ‘personal-digital assistant (PDA) devices’ ‘generally
require careful debugging to ensure that they work as intended.’” Pet. 24
(quoting Ex. 1007, 1:10–46). The Petition argued, therefore, a person of
ordinary skill in the art would have recognized “an explicit suggestion in the
art for debugging software applications such as Darbee’s remote control
application, and would have reason to seek and incorporate teachings of
references that discussed debugging.” Id. at 24–25 (citing Ex. 1010 ¶¶ 100–
101).
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We were not persuaded by Petitioner’s argument and evidence that a
person of ordinary skill in the art would have been motivated to combine the
teachings of Darbee and Golender. As discussed in the Decision, contrary to
Petitioner’s assertion:
Gopalan appears to teach away from the proposed combination
of Darbee and Golender because, immediately following the
passage cited by Petitioner, Gopalan cautions that “[h]owever,
debugging embedded systems can be difficult” because, among
other reasons, the software tools developed for debugging
embedded systems are “very specialized in purpose, and usually
cannot be extended to collect and analyze data other than that for
which they were initially developed.”
Dec. 44 (emphasis in original) (citing Ex. 1007, 1:31–40). As further
explained in the Decision:
Given the cautionary statements in Gopalan discussed above that
the debugging tools for embedded systems “usually cannot be
extended . . . other than that for which they were initially
developed,” Gopalan appears to discourage the proposed
combination. Specifically, Gopalan suggests that Golender’s
debugging tools for a general purpose computer would not be
useful for embedded systems (which Petitioner appears to equate
to Darbee’s remote control) due to the specialized requirements
for debugging tools for such embedded systems. Thus,
combining Golender’s teachings of run-time debugging and code
execution tracing tools running on a general purpose computer
with Darbee’s teachings of the software application running on
the remote control device for a consumer electronic device is
“unlikely to be productive” of the result sought by Petitioner.
Neither Petitioner nor Dr. Medvidovic addresses the cautionary
statements in Gopalan discussed above or explains adequately
why a person of ordinary skill in the art would have been
motivated to combine Darbee and Golender in the fashion
proposed by Petitioner notwithstanding Gopalan’s statements
that discourage the proposed combination.
Id. at 44–45 (emphases added) (citing Pet. 24–25; Ex. 1010 ¶¶ 100–101).
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Regarding Petitioner’s explanation as to how a person of ordinary
skill in the art would have combined the disclosures of Darbee and
Golender, the Decision found:
Petitioner does not explain adequately how a skilled artisan
would have made the proposed combination of Darbee and
Golender, combining Golender’s teachings of run-time
debugging and code execution tracing tools running on a general
purpose computer under the Windows NT/2000 and Windows
95/98 operating systems using breakpoints or functional entry
points with Darbee’s teachings of a software application running
on a remote control for a consumer electronic device.
Id. at 45 (citing Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994
(Fed. Cir. 2017) (“[T]he Board nowhere clearly explained, or cited evidence
showing, how the combination of the two references was supposed to work.
At least in this case, such a clear, evidence-supported account of the
contemplated workings of the combination is a prerequisite to adequately
explaining and supporting a conclusion that a relevant skilled artisan would
have been motivated to make the combination and reasonably expect success
in doing so.” (emphases added by the Decision))). As explained in the
Decision:
The amount of explanation needed to meet the governing
legal standards—to enable judicial review and to avoid judicial
displacement of agency authority—necessarily depends on
context. A brief explanation may do all that is needed if, for
example, the technology is simple and familiar and the prior art
is clear in its language and easily understood. On the other hand,
complexity or obscurity of the technology or prior-art
descriptions may well make more detailed explanations
necessary.
Id. at 46 (quoting Pers. Web Techs., 848 F.3d at 994). The Decision found
that “this case falls into the latter category.” Id. The Decision explained
that
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Given the level of ordinary skill proposed by Petitioner, the
complexity of the technology of Golender’s debugging and code
execution tracing tools running on a general purpose computer,
and the specialized nature of the embedded system software
running the specialized hardware of Darbee’s remote controller
for a consumer electronic device, it was incumbent on Petitioner
to explain how Golender’s debugging and code execution tracing
technology would have been adapted for Darbee’s remote
controller and combined with Darbee’s teachings on the remote
controller software. Because Petitioner has failed to do so, we
determine that Petitioner has not established sufficiently that a
person of ordinary skill in the art would have been motivated to
combine the teachings of Darbee and Golender to achieve the
claimed invention.
Id. (emphasis added).
2. Petitioner’s Arguments in the Request
In its Request, Petitioner asserts “the Decision misapprehends the
claim language in finding that this case falls into the category of complex or
obscure technology.” Req. 8. According to the Request, claim 1 recites
“facilitating debugging,” and merely requires “the intended use that data ‘is
available for use in debugging.’” Id. (citing Ex. 1001, 38:43–58). The
Request contends that making data available for use in debugging “does not
even require the act of debugging itself,” and, thus, “making data ‘available
for use in debugging’ would not require Golender’s ‘debugging and code
execution tracing tools running on a general purpose computer.’” Id. In
light of the “simplicity . . . of the teachings to be incorporated,” the Request
argues, “the Petitioner’s analysis fulfills the requirement to show a
motivation to combine.” Id. at 9–10.
The Request, however, does not identify where in the Petition such
arguments based on claim language were presented. We could not have
misapprehended or overlooked arguments or evidence that were not
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presented or developed in the Petition. At best, Petitioner’s arguments in its
Request attempt to remedy the deficiencies in the Petition our Decision
identified, by supplementing the arguments in the Petition. A request for
rehearing is not a supplemental petition. Nor is it an opportunity to present
new arguments or evidence that could have been presented and developed in
the first instance in the Petition.
Even if we were to consider Petitioner’s newly presented argument in
the Request that the claim language “facilitating debugging” and “is
available for use in debugging” does not require debugging, this argument is
not persuasive because Petitioner’s rationale for combining Darbee and
Golender in the Petition focuses on the need to modify Darbee’s remote
control unit to include debugging. See Pet. 24 (“A POSITA would have
recognized that software applications such as the remote control application
on Darbee’s remote control unit require debugging.” (emphasis added)), 24–
25 (“a POSITA would have recognized an explicit suggestion in the art for
debugging software applications such as Darbee’s remote control
application, and would have reason to seek and incorporate teachings of
references that discussed debugging” (emphases added)).
To the extent the Request argues that the technology at issue is simple
and disagrees with our finding in the Decision that, given the complexity of
technology disclosed in Golender and the specialized nature of the
embedded system software and hardware described in Darbee, it was
incumbent on Petitioner to explain in the Petition “how Golender’s
debugging and code execution tracing technology would have been adapted
for Darbee’s remote controller and combined with Darbee’s teachings on the
remote controller software” (Dec. 46), mere disagreement with the Decision
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is not a proper basis for rehearing when Petitioner’s arguments and evidence
were considered and addressed in the Decision.
In the Request, Petitioner further contends “the Decision overlooks
the complete reasoning provided by Petitioner that supports finding of a
motivation to combine.” Req. 11. More particularly, Petitioner asserts
“[t]he Decision focuses solely on Petitioner’s argument that
contemporaneous prior art recognizes the need for debugging applications,”
whereas “Petitioner twice noted that Golender itself provided evidence in
support of its teachings.” Id. (emphasis in original).
In a related argument, the Request asserts that in the analysis of
limitation [1.2.2], Petitioner noted that Golender “discloses advantages to
the use of debugging application based on uploaded data; namely, the
software developer can ‘analyze how the client program is operating at the
remote site, without the need to visit the remote site.’” Req. 12 (citing
Pet. 28; Ex. 1006, 4:28–32). The Request contends that the Decision
“entirely overlooked this portion of Petitioner’s reasoning that provides
further motivation to combine the teachings of Darbee and Golender.” Id.
In the cited portion of the Petition, however, Petitioner referred to the
Petition’s analysis of limitation [1.1.2], which relied on Gopalan as
providing “an explicit suggestion in the art for debugging software
applications like Darbee’s remote control application.” See Pet. 28.
We did not overlook the portions of Petitioner’s rationale that relied
upon the disclosures of Golender. Rather, we determined that this rationale
was undercut by Gopalan’s disclosure that debugging tools for embedded
system usually cannot be extended other than that for which they were
initially developed. See Dec. 44–45.
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In its Request, Petitioner additionally asserts that “the Decision
misapprehends the law of obviousness and . . . overlooks the remainder of
Gopalan.” Req. 12. The Request contends that the Decision “focused only
on the Background of Gopalan instead of considering, and thus overlooking,
the reference in its entirety as legally required.” Id. at 13 (citing W.L. Gore
& Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)).4
The cited W.L. Gore case involved an issue of obviousness over a
combination of prior art references. See W.L. Gore, 721 F.2d at 1546–47,
1550. Here, however, the Petition did not include Gopalan in any asserted
combination of prior art references. See Pet. 4. Rather, the Petition relied
on Gopalan only for its alleged “explicit suggestion” of the motivation to
combine Darbee and Golender in the asserted ground of obviousness over
the combination of Darbee and Golender. See id. at 24–25. The Decision
discussed the portions of Gopalan in the reference’s Background section (see
Dec. 43–44 (citing Ex. 1007, 1:10–46)) because those were the portions
cited in the Petition as allegedly providing “an explicit suggestion” for
combining Darbee with the “teachings of references that discussed
debugging,” such as Golender (see Pet. 24–25 (citing Ex. 1007, 1:10–46)).
Contrary to the Request’s argument, there was no legal error in the Decision
in simply considering the arguments and evidence as presented in the
Petition.
The Request further contends that “[h]ad the entirety of Gopalan been
considered, the Board would not have found that Gopalan teaches away and,
instead, would have found a reasonable likelihood of prevailing.” Req. 13.
Aside from the portions of Gopalan identified above, however, the Petition

4 The Request’s citation to 721 F.2d 1520 appears to be an error.
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did not cite any other portions of Gopalan, much less “the reference in its
entirety,” as providing or suggesting the reasons to combine Darbee and
Golender in the manner proposed by Petitioner in the Petition. See Pet. 17–
30; Req. 13. We could not have misapprehended or overlooked arguments
or evidence that were not presented or developed in the Petition.
Nor does the Request identify any other portion of Gopalan, much less
“the entirety of Gopalan,” as providing or suggesting the motivation to
combine, other than citing the Abstract of Gopalan as disclosing “[d]ata
capture and analysis for debugging embedded systems.” See Req. 13 (citing
Ex. 1007, Abstract). But this disclosure in Gopalan’s Abstract does not take
away from the fact that Gopalan also cautions that “debugging embedded
systems can be difficult” and that software tools developed for debugging
embedded systems are “very specialized in purpose, and usually cannot be
extended to collect and analyze data other than that for which they were
initially developed,” as discussed in the Decision. Dec. 44 (emphasis added
by the Decision) (citing Ex. 1007, 1:31–40).
To the extent the Request argues that the Decision misapprehended
the law of obviousness and the requirements for finding a teaching away
(see Req. 12–13), we disagree with Petitioner’s argument. The relevant
standard for teaching away, as articulated by the Federal Circuit is
reproduced below:
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.
A reference does not teach away, however, if it merely expresses
a general preference for an alternative invention but does not
criticize, discredit, or otherwise discourage investigation into the
invention claimed.
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Galderma Laboratories, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir.
2013) (emphasis added). As determined in the Decision, Gopalan expressly
discourages using general-purpose debugging tools for embedded systems
due to the specialized requirements for debugging tools for such embedded
systems. See Dec. 44–45. Thus, the Decision did not overlook applicable
Federal Circuit precedent or Gopalan in finding that neither Petitioner nor
Dr. Medvidovic addressed the cautionary statements in Gopalan discussed
above or explained adequately why a person of ordinary skill in the art
would have been motivated to combine Darbee and Golender in the fashion
proposed by Petitioner notwithstanding Gopalan’s statements that
discourage the proposed combination. See id. at 45 (citing Pet. 24–25;
Ex. 1010 ¶¶ 100–101).
The Request further contends that “[t]o the extent Gopalan teaches
away from or cautions against ‘debugging tools for embedded systems’
because they ‘usually cannot be extended . . . other than that for which they
were initially developed,’ such a finding would motivate, not discourage,
the use of Golender’s ‘debugging tools for a general purpose computer.’”
Req. 13–14 (citations omitted). By this argument, the Request simply
disagrees with our determination in the Decision that the portions of
Gopalan cited in the Petition discourage the proposed combination of
Darbee and Golender. Mere disagreement with the Decision is not a proper
basis for rehearing when Petitioner’s arguments and evidence were
considered and addressed in the Decision.
The Request also asserts that the Decision did not comply with
37 C.F.R. § 42.108(c) by overlooking Dr. Medvidovic’s testimony that the
concept of “debugging” was extremely familiar to a POSITA, as Dr.
Medvidovic testified that “the term was known as early as the 1950s.”
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Req. 9 (citing Ex. 1010 ¶¶ 47, 48). But in the asserted ground based on the
combination of Darbee and Golender, the Petition did not rely on what was
well-known to a person of ordinary skill in the art to teach the “debugging
the remote control application” limitation recited in claim 1. See Pet. 16–29.
Rather, as discussed in the Decision, the Petition relied on Golender to teach
the limitations relating to debugging and uploading data to a computer for
use in debugging the remote control application of the controlling device.
Dec. 43 (citing Pet. 17–30). Indeed, Dr. Medvidovic’s testimony discussed
in the Request (see Ex. 1010 ¶¶ 47, 48) was not cited in the Petition. See
generally Pet. Again, we could not have misapprehended or overlooked
arguments or evidence that were not presented or developed in the Petition.
Lastly, the Request contends that the Decision “misapprehended the
legal standards for obviousness” by “applying a bodily incorporation
analysis to Petitioner’s proposed combination of teachings.” Req. 14–15.
The Request misunderstands the Decision. The Decision did not apply a
bodily incorporation analysis to Petitioner’s proposed combination or
otherwise require Petitioner to explain “how Golender’s entire system would
be imported into Darbee’s system.” See id. at 15.
Instead, the Decision determined that in this case “a clear, evidence-
supported account of the contemplated workings of the combination is a
prerequisite to adequately explaining and supporting a conclusion that a
relevant skilled artisan would have been motivated to make the combination
and reasonably expect success in doing so.” Dec. 45 (quoting Pers. Web
Techs., 848 F.3d at 994) (emphases added by the Decision). In addition, the
Decision determined that the Petition did not establish sufficiently the
rationale to combine Darbee and Golender because the Petition did not
adequately explain how a person of ordinary skill in the art would have
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combined “Golender’s teachings of run-time debugging and code execution
tracing tools running on a general purpose computer using the Windows
NT/2000 and Windows 95/98 operating systems using breakpoints or
functional entry points with Darbee’s teachings of a software application
running on a remote control for a consumer electronic device.” Id. at 45–46.
To the extent the Request disagrees with the Decision’s analysis of the
motivation to combine Darbee with Golender, mere disagreement with the
Decision is not a proper basis for rehearing when Petitioner’s arguments and
evidence were considered and addressed in the Decision.
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 of the challenged
claims of the ’446 patent. 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
In consideration of the foregoing, it is hereby ORDERED that
Petitioner’s Request for Rehearing is DENIED.
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For PETITIONER:
David O’Brien
Raghav Bajaj
HAYNES & BOONE LLP
David.Obrien.ipr@haynesboone.com
Raghav.bajaj.ipr@haynesboone.com
For PATENT OWNER:
Benjamin Pleune
Ryan Koppelman
Thomas Davison
James Abe
Caleb Bean
Derek Neilson
Nicholas Tsui
ALSTON & BIRD LLP
caleb.bean@alston.com
derek.neilson@alston.com
nick.tsui@alston.com
ben.pleune@alston.com
ryan.koppelman@alston.com
tom.davison@alston.com
james.abe@alston.com