Universal Remote Control, Inc.v.Universal Electronics Inc.

Patent Trial and Appeal Board

Dec 15, 2015

08314970 (P.T.A.B. Dec. 15, 2015)

Trials@uspto.gov Paper 50
571-272-7822 Date Entered: December 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIVERSAL REMOTE CONTROL, INC.,
Petitioner,

v.

UNIVERSAL ELECTRONICS INC.,
1

Patent Owner.
____________

Case IPR2014-01103
Patent 5,552,917
____________

Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1
Patent Owner represents that the owner of the patent and real party-in-
interest is Universal Electronics, Inc. Paper 4. Office assignment records
indicate, however, that U.S. Bank National Association is the owner of the
patent. Patent Owner should update Office assignment records to be
consistent with its representations made in Paper 4 of this proceeding.

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I. INTRODUCTION
Petitioner, Universal Remote Control, Inc., filed a Petition requesting
an inter partes review of claim 1 of U.S. Patent No. 5,552,917 (Ex. 1001,
“the ’917 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition” or
“Pet.”). Patent Owner, Universal Electronics, Inc., filed a Preliminary
Response. Paper 7 (“Prelim. Resp.”). Upon consideration of the Petition
and Preliminary Response, on January 6, 2015, we instituted an inter partes
review of claim 1 on one ground of unpatentability, pursuant to 35 U.S.C.
§ 314. Paper 9 (“Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response in both unredacted (confidential) and revised redacted forms
(Papers 14 and 46 (“PO Resp.”)), along with a Motion to Seal (Paper 16).
Petitioner filed a Reply in both unredacted (confidential) and revised
redacted forms (Papers 20 and 47; (“Pet. Reply”)), along with a Corrected
Motion to Seal (Paper 22).
Petitioner filed a Motion to Exclude (Paper 30; “Pet. Mot. to
Exclude”) certain portions of Exhibits 1053 and 1054. Patent Owner filed
an Opposition to the Motion to Exclude (Paper 37; “PO Exclude Opp.”), and
Petitioner filed a Reply (Paper 39; “Pet. Exclude Reply”).
Patent Owner filed a Motion to Exclude (Paper 31; “PO Mot. to
Exclude”) Exhibit 1043, and portions of Petitioner’s Reply that rely on
Exhibit 1043. Petitioner filed an Opposition to the Motion to Exclude
(Paper 35; “Pet. Exclude Opp.”), and Patent Owner filed a Reply (Paper 38;
“PO Exclude Reply”). Patent Owner filed a Motion for Observations (Paper
32) and Petitioner filed a Response to the Observations (Paper 36).
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An oral hearing was held on August 19, 2015, and a transcript of the
hearing is included in the record (Paper 49; “Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claim 1 of the ’917 patent is
unpatentable.
A. Related Proceedings
According to the parties, the ’917 patent is involved in the following
lawsuit: Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
SACV 13-00984 AG (JPRx) (C.D. Cal.). Pet. 1; Paper 4.
B. The ’917 Patent
The ’917 patent relates to a remote control that includes input
circuitry with a set of keys or pushbuttons for inputting commands to the
remote control, infrared signal output circuitry for supplying an infrared
signal to a controlled device, and a central processing unit (CPU) coupled to
the input circuitry. Ex. 1001, Abstract, Fig. 8, Fig. 9B. Memory is coupled
to the CPU, which stores code data for generating infrared light to control an
apparatus. Id. Memory may be updated from outside the remote control
through data coupling circuitry and structure coupled to the CPU. Id.
Figure 20 of the ’917 patent is reproduced below.

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Figure 20 is a fragmentary perspective view of a connector having
conversion circuitry and a battery case cover by which data can be input into
the RAM of the operating circuitry of a remote control device. Ex. 1001,
3:20–25. Signal coupling and converting assembly 206 includes connector
assembly 207, cable 208, and cover plate 210 for battery compartment 45
(Fig. 7). Cover plate 210 has three pins 212, 214, and 216 on its underside,
which are positioned to connect with three serial ports 1, 2, and 3 (Fig. 7) of
the remote control device. Id. at 18:5–10. Pins 212, 214, and 216 are
connected by three wire conductors 224, 226, and 228 in cable 208 to
connector assembly 207, which contains conversion circuitry 230.
Conversion circuitry 230 (Figs. 21, 22) enables using some of the nine
sockets 250 of connector assembly 207 for communication with serial ports
1, 2, and 3 via pins 212, 214, and 216. Id. at 18:10–19.

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C. Claim 1
Claim 1 is reproduced below.
1. A remote control comprising input means including a
set of keys or pushbuttons for inputting commands to the
remote control, infrared signal output means for supplying an
infrared signal to a controlled device including IR lamp driver
circuitry, a central processing unit (CPU) coupled to said input
means and to said signal output means, memory means coupled
to said CPU, code data for generating infrared codes stored in
said memory means, and two-way data coupling means coupled
to said CPU for enabling at least one of instruction codes or of
infrared code data for generating infrared codes to be supplied
from outside said remote control through said two-way data
coupling means directly to said CPU for entry into said memory
means to enable a user of the remote control to operate a
selected controlled device upon inputting commands to the
remote control by depressing selected keys of the remote
control and to be transmitted from said remote control through
said two-way data coupling means to a computer.
Id. at 20:17–33.
D. Ground of Unpatentability
We instituted trial based on the sole ground that claim 1 is
unpatentable under 35 U.S.C. § 103(a) based on Ciarcia
2
and Hastreiter.
3

II. ANALYSIS
A. Real Party-in-Interest
Petitioner certifies that Universal Remote Control, Inc. (“URC”) is the
real party-in-interest. Pet. 1. Patent Owner, however, contends that
Petitioner failed to also name Ohsung Electronics Co., Ltd., and/or Ohsung
Electronics U.S.A., Inc. (“Ohsung”), a supplier of products to Petitioner

2
Steve Ciarcia, Build a Trainable Infrared Master Controller, BYTE, Mar.
1987, at 113. (Ex. 1005).
3
U.S. Patent No. 4,667,181, issued May 19, 1987 (Ex. 1004).
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(URC), as real parties-in-interest and that Petitioner’s failure to do so is fatal
to its Petition. PO Resp. 21–26.
4

Section 312(a) of Title 35 of the United States Code provides that a
petition for inter partes review under 35 U.S.C. § 311 may be considered
only if, among other things, the petition identifies all real parties-in-interest.
35 U.S.C. § 312(a)(2). Whether a non-identified party is a real party-in-
interest to a proceeding is a highly fact-dependent question. Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial
Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “A
common consideration is whether the non-party exercised or could have
exercised control over a party’s participation in a proceeding.” Trial
Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). The
concept of control generally means that “it should be enough the nonparty
has the actual measure of control or opportunity to control that might
reasonably be expected between two formal coparties.” Id.
Patent Owner argues that Ohsung exercised or could have exercised
control over Petitioner’s participation in this proceeding based on the close
relationship between Petitioner and Ohsung. PO Resp. 22. In support of
that argument, Patent Owner first directs us to evidence to support the notion
that Petitioner (URC) and Ohsung share at least one employee. According
to Patent Owner, Mr. Jak You is a “key remote control executive [who]
identifies himself as both an Ohsung and URC employee.” Id. at 23.
Evidence that Mr. You first worked for Petitioner (URC), then worked for
Ohsung for demonstrating that Petitioner and Ohsung share employees,

4
Citations are to the revised redacted version of the PO Response (Paper
46).
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dates back to August 8, 2001 (Ex. 2019), July 16, 2012 (Ex. 2018), and July
2013 (Exhibit 2021). Such evidence, however, does not tend to show that
Mr. You, around the time of filing of Petitioner’s Petition, held himself out
as working for both Ohsung and Petitioner, or that Ohsung and Petitioner
“share employees.” We would want to know the relationship status between
Petitioner and Ohsung around the time Petitioner filed its Petition, as far as
sharing of employees goes.
In any event, and even assuming that URC and Ohsung share an
employee, we do not agree with Patent Owner that such a sharing of one
employee (Mr. You) suggests that Ohsung exercised or could have exercised
control over Petitioner’s participation in the proceeding. For instance, Mr.
You is said to have been a director of engineering for Petitioner. Id. at 23.
Patent Owner has not shown that Mr. You was in a position within Ohsung
to persuade Ohsung and/or Petitioner to make a litigation decision to pursue
an inter partes proceeding.
Moreover, we are not persuaded by Patent Owner’s argument that
because URC previously paid for office space which an Ohsung employee
(Mr. You) used, this suggests that Ohsung has reciprocated by paying for
anything associated with the proceedings or controlled the proceeding in any
other way. Id. If anything, the evidence tends to show that URC pays for
expenses, such as the costs associated with these proceedings, not Ohsung.
We also have considered Patent Owner’s argument that Ohsung’s and
URC’s close relationship is exemplified by a settlement and license
agreement (Ex. 2050, “agreement”) between Patent Owner and Petitioner, a
provision of which obligates Ohsung to pay royalties to Patent Owner. PO
Resp. 25. Patent Owner argues that the agreement strongly suggests that
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Ohsung may have had the opportunity to control, direct, and/or influence the
present proceeding. Id. at 25–26. The agreement was executed in 2004.
The royalties that Patent Owner mentions were paid out in 2005, 2006, and
2007. Patent Owner has not shown how the agreement exemplifies a close
relationship in 2014 when the petition in this proceeding was filed.
Moreover, the agreement and royalties are directed to a set of patents, none
of which is the patent involved in this proceeding. Accordingly, we are not
persuaded by this argument.
Lastly, we are not persuaded by Patent Owner’s argument that
because URC and Ohsung share litigation counsel in the related case, that
that tends to show that Ohsung has controlled, or had the opportunity to
control, this proceeding. In summary, and based on the totality of arguments
and evidence presented, we are not persuaded that Ohsung is a real party-in-
interest on behalf of Petitioner.
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B. Claim Interpretation
The ’917 patent has expired and, thus, cannot be amended. For claims
of an expired patent, the Board’s claim interpretation is similar to that of a
district court. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). “In
determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17
(Fed. Cir. 2005) (en banc)). However, there is a “‘heavy presumption’” that
a claim term carries its ordinary and customary meaning. CCS Fitness, Inc.
v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
Although Petitioner proffers constructions for several means-plus-
function terms (Pet. 12–14), and Patent Owner weighs in on those
constructions (PO Resp. 2–9), we only need to construe, for purposes of this
Final Written Decision, “code data.” PO Resp. 13–15; Pet. Reply 10–11; Tr.
9, 36.
Code Data
Claim 1 recites memory means coupled to a central processing unit
(CPU) and code data for generating infrared codes stored in the memory
means. Ex. 1001, 20:21–23. Claim 1 further requires two-way data
coupling means coupled to the CPU for enabling at least one of instruction
codes or of infrared code data for generating infrared codes to be supplied
from outside said remote control through said two-way data coupling means
directly to the CPU for entry into said memory means. Id. at 20:23–28.
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Patent Owner argues that “code data” means “‘instructions and timing
information for generating an infrared signal.’” PO Resp. 10. Both parties
agree that “code data” includes timing information or data, but the parties
disagree that code data also includes instructions.
5
Id.; Pet. Reply 4; Tr. 13,
40, 59. It is necessary for us to construe the phrase because there is a
dispute about whether the prior art (Ciarcia) describes supplying from
outside the remote control (e.g., a computer connected through a cable to the
remote control), code data to the remote control. In particular, Patent Owner
agrees that Ciarcia describes supplying from outside the remote control
timing data to the remote control, but disagrees that Ciarcia also describes
supplying instructions to the remote control. PO Resp. 13–15. For the
reasons that follow, we determine that code data includes timing information
or data, but need not include instructions.
We begin with the plain language of claim 1. Claim 1 recites enabling
“at least one of instruction codes or of infrared code data for generating
infrared codes.” Based on the words of claim 1, the code data is used for
generating infrared codes. Moreover, the claim requires enabling
6
either
instruction codes or infrared code data to be supplied from outside the
remote control. In its Response, Patent Owner does not explain how

5
Patent Owner refers to instructions as programming (computer
instructions) or computer executable instructions. PO Resp. 15; Ex. 2029
¶ 59; Tr. 66. Patent Owner contrasts instructions with timing information,
which, it submits, is data. PO Resp. 12; Tr. 64.
6
During trial hearing, counsel for Petitioner made arguments that due to the
word “enabling” claim 1 does not require that anything be supplied from
outside the remote control, arguments that were not presented previously.
See, e.g., Tr. 87–88. We need not and do not consider Petitioner’s
arguments advanced during trial hearing that were not raised prior to the trial
hearing. To do otherwise would be prejudicial to Patent Owner.
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“instruction codes” are different, if they are at all, from the “instructions” it
argues should be included in the construction of “code data.” The
Specification of the ’917 patent uses “instructions” interchangeably with
“instruction codes” for generating infrared codes. See, e.g., Ex. 1001, 7:59–
66. Based on the record before us, we find that instruction and instruction
codes with respect to generating infrared codes are synonymous insofar as
the Specification and claim 1 is concerned. Patent Owner has not explained
otherwise.
7

Claim 1 itself does not define or further explain what “code data”
means. For example, there is nothing in claim 1 that would lead us to
believe that data, albeit code data, should be construed to mean data plus
programming or executable computer instructions. The phrase is “code
data.” Moreover, claim 1 distinguishes between instruction codes and code
data in that the claim recites “at least one of instruction codes or of infrared
code data.” Based on the plain words of claim 1, code data and instruction
codes are not the same thing. Yet, Patent Owner’s claim construction would
effectively rewrite the language to remove the “at least one of . . . or”
language from claim 1. For example, the claim covers choosing both
instruction codes and code data, but under Patent Owner’s construction such
scenario would make little sense because code data would also include
instruction codes or instructions.

7
In its Reply brief, and during hearing, Petitioner argued that the claim 1
“instruction codes” are synonymous to the “instructions” that Patent Owner
argues is part of “code data.” Pet. Reply 4, 6–7; Tr. 18. Patent Owner had
ample opportunity to explain, during hearing, that “instruction codes” are
different from “instructions” that it argues is part of “code data,” but did not
do so. Tr. 38.

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We next turn to the Specification of the ’917 patent. Patent Owner
focuses on the following passage from the Specification of the ’917 patent in
support of its argument that code data includes instructions:
In the method for learning or acquiring code data for infrared
codes disclosed herein, no counting of pulses is carried out.
Instead the method involves the following steps:
(a) receiving a transmission of a train of pulses from a remote
control transmitter;
(b) recording the point-in-time of an edge of each pulse in a
train of the pulses;
(c) transforming the recorded point-in-time data into a list of
instructions for generating a replica of the train of pulses;
(d) timing the duration of a train of the pulses;
(e) timing the period between trains of pulses;
(f) associating a function key of the universal remote control
device 10 with the time duration of the train of pulses and
the list of instructions for generating a replica of the train
of pulses;
(g) determining whether or not repetitions of the transmission
of train of pulses is present;
(h) ignoring repetitions of the train of pulses;
(i) noting that repetitions are present; and
(j) storing for use in a universal remote control device, the
information acquired in steps (c), (d), (e), (f), and (i).

Ex. 1001, 8:63–9:18.
Patent Owner argues that step (c) from above identifies instructions,
and steps (d), (e), (f), and (i) identify timing information. PO Resp. 11.
Patent Owner further argues that Figure 14 and the corresponding text of the
Specification of the ’917 patent confirm that the phrase “code data” is
different from an IR code or signal, and is used to generate the IR code
based on instructions and timing data. Id. (citing Ex. 2029 ¶¶ 50–54). We
have reviewed Mr. Cook’s testimony in support of the proposed
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construction. Neither he nor Patent Owner discusses any other passage in
the Specification of the ’917 patent. Rather, his explanation for why we
should construe narrowly “code data” focuses solely on one embodiment of
the Specification. Ex. 2029, ¶¶ 49–54.
There are several other descriptions in the ’917 patent Specification
besides the one above that would indicate to a person of ordinary skill in the
art that code data need not include “instructions.” For example, the
Specification of the ’917 patent, distinguishing between a prior art method,
explains:
In learning the infrared code and transforming same to
code data which is then stored in a RAM of the control device
and later used to generate infrared codes, a novel method is
utilized wherein no counting of pulses takes place, and only the
time duration of the pulses in a burst of pulses from the leading
edge of the first pulse in a burst of pulses to the trailing edge of
the last pulse in the burst as well as the time duration of the
pause between bursts are sensed and used to learn and later to
generate the infrared codes.

Ex. 1001, 1:57–65 (emphasis added).

The above indicates that to transform infrared codes into code data,
only time duration of pulses as well as the time duration of the pause
between bursts are sensed and used to learn and generate infrared codes.
Absent from this passage is any reference to generating instructions (e.g.,
computer executable programming) as part of the code data; it only refers to
timing data. Yet, neither the Patent Owner Response nor the supporting
testimony of Mr. Cook (Ex. 2029) discusses or attempts to explain this
passage in any way.
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Moreover, there are several passages that describe code data as
separate and distinct from instructions or instruction codes as follows:
Incoming data is received serially at serial port 2 and
conveyed to input port 112, when it is desired to update the
code data and/or instructions in the RAM 54.

Id. at 7:41–44 (emphasis added).

After the infrared code is deciphered, the code data
therefor and instructions for generating such code (see the flow
chart in FIG. 14) are stored in a programming computer 200
(FIG. 10) and the device 10 is programmed as explained below.
It is to be noted that the circuitry 42 has no ROM and all
instruction codes and code data are loaded directly into the
RAM 54. This allows for infinite upgradability in the field via
the serial ports 1, 2, 3.

Id. at 7:59–67 (emphasis added).

(6) The multiplexing of the address and data lines
between the RAM 54 and the CPU 56 enables scrambling of the
instruction codes and the code data so that the memory image
in the RAM 54 is encrypted.

Id. at 19:35–38 (emphasis added).

From the above passages, a person of ordinary skill in the art would
have understood that code data need not include instructions. In other
words, the above passages indicate that “instructions” or instruction codes
are separate from “code data.” If code data necessarily included instructions
or instruction codes, there would be no occasion for the Specification to
refer to instructions or instruction codes separately from code data. Yet, the
Patent Owner Response and the supporting testimony of Mr. Cook (Ex.
2029) are silent with respect to these passages.
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Lastly, the Specification of the ’917 patent describes that code data for
the infrared codes “may be obtained from vendor information sheets and
specifications, can be determined using the methods disclosed in U.S. Pat.
Nos. 4,623,887 and 4,626,848, or by the method disclosed herein.” Ex.
1001, 8:58–62. Again, the Patent Owner Response and the supporting
testimony of Mr. Cook (Ex. 2029) are silent with respect to this passage and
the other ways that code data may be obtained or determined. In summary,
there are many passages in the Specification of the ’917 patent that tend to
support not construing “code data” as Patent Owner would want us to, yet
neither the Patent Owner Response nor the supporting testimony of Mr.
Cook (Ex. 2029) discusses any of those other passages. Rather, Patent
Owner’s arguments and Mr. Cook’s testimony are confined to discussing
only the one embodiment that Patent Owner argues supports the contention
that code data always includes necessarily instructions. For all of the
reasons discussed above, we are not persuaded by Patent Owner’s arguments
that “code data” includes necessarily instructions. Based on the record
before us, “code data” includes timing information or data, but need not
include instructions.
C. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 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. 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;
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(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of non-
obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that
regard, an obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. at 418; In re Translogic Tech., Inc.,
504 F.3d 1249, 1262. (Fed. Cir. 2007). The level of ordinary skill in the art
is reflected by the prior art of record. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
We analyze the asserted ground of unpatentability in accordance with
the above-stated principles.
D. Claim 1—Obviousness over Ciarcia and Hastreiter
Petitioner asserts that claim 1 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over the combination of Ciarcia and Hastreiter. Pet. 36–
44. In its Petition, Petitioner explains how the combination of Ciarcia and
Hastreiter collectively meets each claim limitation and articulates a rationale
to combine the teachings. Id. Petitioner also relies upon a Declaration of
Stephen D. Bristow to support the assertions made in connection with the
Petition. Ex. 1007.
Patent Owner argues that neither Ciarcia nor Hastreiter meet the code
data limitation of claim 1. PO Resp. 13–15. Patent Owner also argues that
there is insufficient reason to combine Ciarcia and Hastreiter. Id. at 15–17.
Lastly, Patent Owner argues that secondary considerations weigh in favor of
the nonobviousness of claim 1. Id. at 17–21. To support its contentions,
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Patent Owner relies upon the Declarations of Alex Cook (Ex. 2029) and
Ramzi S. Ammari (Ex. 2064).
Ciarcia
Ciarcia describes a trainable remote control (Master Controller) with a
keypad for inputting commands into the remote control. Ex. 1005, 114.
8

The remote control includes a central processing unit (CPU) (Intel 8031
microprocessor, IC1), memory (RAM IC11) coupled to the CPU, and
infrared LEDs and driver circuitry that produce an IR signal to a controlled
device. Id. at 114–115. The remote control may be connected to a personal
computer using three wires from an RS-232 interface. Id. at 119 (“The serial
connector is an RJ-11 telephone jack instead of the usual 25-pin DB-25
connector. Only three wires are required: data from the PC, data to the PC,
and signal ground.”). The personal computer is connected to the remote
control via the RS-232 interface and is “used to set up menus of devices
(receivers, CD players, tape decks) and functions for each device (turn on,
play forward, etc.).” Id. at 114. Once a menu is downloaded to the remote
control, each function is taught and tested, after which a completed menu
and synthesis data are uploaded to the personal computer and “stored on disk
(in case you want to load it into another Master Controller or add another
device later without retraining all of them).” Id.
Hastreiter
Hastreiter describes keyboard data input assemblies, including
circuitry for minimizing the number of interconnections with a
microprocessor or other apparatus with which a keyboard is used. Ex. 1004,

8
Citations are to the reference’s magazine page numbers rather than the
exhibit page numbers.
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1:5–10. In particular, Hastreiter describes a keyboard circuit that uses
diodes between row and column lines of the keyboard, similar to the
keyboard circuit described in the ’917 patent. See, e.g., Ex. 1001, Fig. 9B;
Ex. 1004, Figs. 1, 2.
Petitioner’s Assertions
Petitioner relies on Ciarcia to meet all of the claim 1 limitations, with
the exception of the “input means.” Pet. 36–44. Based on its construction of
“input means” to include at least the corresponding structure of a keyboard
circuit as shown in Fig. 9B of the ’917 patent, Petitioner relies on the
keyboard circuit of Hastreiter in combination with Ciarcia to meet the “input
means.” Id. at 12, 22–23, and 37–38. Petitioner points to teachings in
Hastreiter that the keyboard design can be used to minimize the required
number of interconnections with a microprocessor or other apparatus with
which a keyboard is used. Id. at 38; Ex. 1004, 1:5–11. Mr. Bristow opines
that skilled artisans at the time of the invention would have understood that
Hastreiter’s keyboard circuit could have been used in Ciarcia’s remote
control to minimize connections to the microprocessor. Ex. 1007 ¶ 54.
Code Data
Patent Owner does not contest that any feature is missing from the
combination of Ciarcia and Hastreiter other than supplying from outside the
remote control (e.g., a computer connected through a cable to the remote
control) “code data” to the remote control. PO Resp. 13–15. Petitioner
accounts for the supplying from outside the remote control (e.g., a computer
connected through a cable to the remote control) “code data” limitation by
relying on the description in Ciarcia of downloading completed menu and
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synthesis data to the same or different Master Controller. Pet. 17, 42; Ex.
1005, 114; Ex. 1007 ¶¶ 51–53; Tr. 31–32.
According to Patent Owner, the code data limitation is missing
because Ciarcia does not describe supplying “code data” comprising
instructions from a computer to the remote control. PO Resp. 14. As
explained above in the claim construction section, Patent Owner has not
shown that “code data” necessarily includes instructions. Rather, as stated
above “code data” includes timing information or data, but need not include
instructions, e.g., programmable software code. Patent Owner concedes that
Ciarcia describes downloading timing information to the remote control. PO
Resp. 14; Ex. 1053, 357; Tr. 41.
Based on the record before us, Petitioner has shown by a
preponderance of the evidence that all of the claim 1 limitations are met by
the combination of Ciarcia and Hastreiter.
Combining Ciarcia and Hastreiter
Patent Owner argues that it would not have been obvious to combine
Ciarcia and Hastreiter. PO Resp. 15–17. As explained above, Petitioner
articulates a rationale with supporting evidence for combining Ciarcia and
Hastreiter. In particular, Petitioner points to teachings in Hastreiter that the
keyboard design can be used to minimize the required number of
interconnections with a microprocessor or other apparatus with which a
keyboard is used. Pet. 38; Ex. 1004, 1:5–11. Mr. Bristow opines that skilled
artisans at the time of the invention would have understood that Hastreiter’s
keyboard circuit could have been used in Ciarcia’s remote control to
minimize connections to the microprocessor. Ex. 1007 ¶ 54. Accordingly,
we are not persuaded by Patent Owner’s conclusory assertion that “[t]he
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Petition fails to articulate any reason why one having ordinary skill in the art
would have been motivated to combine Ciarcia with Hastreiter.” PO
Resp. 15.
Patent Owner also argues that because Hastreiter says nothing about
remote controls it is not in the same field as Ciarcia, directing attention to
Mr. Cook’s testimony, who testifies to the same. Id. at 16; Ex. 2029 ¶ 72.
The test for determining whether a prior art reference constitutes
analogous art to the claimed invention is: (1) whether the prior art is from
the same field of endeavor, regardless of the problem addressed, and (2) if
the reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004).
Here, Patent Owner has not explained sufficiently why Hastreiter is
from a different field of endeavor as that of the claimed invention. Patent
Owner’s comparison between the fields of endeavor of Ciarcia and
Hastreiter misses the mark. In any event, Patent Owner’s argument that
Hastreiter is not in the same field as Ciarcia is conclusory, as is Mr. Cook’s
testimony. Neither explain why that is so. In addition, Patent Owner has not
addressed the second prong of the above test. And, importantly, during
cross examination, Mr. Cook testified that the field of “keypad design is
inherently a field that people in remote controls are aware of.” Ex. 1053,
427:21–25. Such a statement would tend to support a finding that Hastreiter
is analogous art. Hastreiter is concerned with circuitry interconnections
between a microprocessor and a keyboard data input assembly and even
goes as far as to state that it is applicable for apparatuses that use keyboards.
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Ex. 1004, col. 1:5–10. The claimed invention recites a remote control (an
apparatus) with an input means including a set of keys or pushbuttons for
inputting commands (e.g., a keyboard), where the input means is coupled to
a microprocessor, which processes the commands. Based on the record
before us, we find that Hastreiter is analogous art, and, thus, we are not
persuaded by Patent Owner’s argument that Hastreiter is nonanalogous art.
Patent Owner argues that Ciarcia teaches away from any combination
with Hastreiter. PO Resp. 16–17. Patent Owner argues that the keypad
arrangement disclosed in Hastreiter is unnecessarily complex to be used in
Ciarcia’s remote, and that a person of ordinary skill in the art would not have
looked to Hastreiter for a keyboard data input assembly that minimized the
number of diode switches used (interconnections) because the Ciarcia
remote control only has six keys, such that minimizing interconnections
would not be a concern. Id. at 16–17; Ex. 2029 ¶¶ 63–71, 79, and 81. We
are not persuaded by Patent Owner’s arguments.
Hastreiter is not limited to only keyboards “having a large number of
hard keys” as Mr. Cook asserts. Ex. 2029 ¶ 76. Rather, Hastreiter explains
that although a five by five array of keyboard conductors is shown, a person
having ordinary skill in the art would have understood that “the present
invention may be easily adapted to a square matrix of any size.” Ex. 1004,
col. 3:31–34. For this reason, we do not give Mr. Cook’s testimony
substantial weight that Hastreiter is limited to only keyboards having a large
number of keys, and thus is unnecessarily complex to be used in Ciarcia’s
remote, because that testimony is not supported by what Hastreiter actually
conveys to a person of ordinary skill in the art. For similar reasons, we do
not give Mr. Cook’s testimony substantial weight that “Ciarcia’s remote
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control would not benefit from Hastreiter’s keypad arrangement because
Ciarcia’s remote has very few keys” and that the “benefit of Hastreiter’s
keypad arrangement increases as the number of keys required grows larger.”
Ex. 2029 ¶ 81. Again, Hastreiter is not limited to only keypads with a large
number of keys and even Mr. Cook recognizes that, although the benefit
may increase with more keys on a keypad, there is still a benefit from the
Hastreiter arrangement of reducing the number of electrical interconnections
between the keypad and the microprocessor. Id. “[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
KSR, 550 U.S. at 417.
Objective Evidence of Nonobviousness
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham, 383 U.S. at 17. Notwithstanding what the
teachings of the prior art would have suggested to a person of ordinary skill
in the art at the time of the claimed invention, the totality of evidence
submitted, including objective evidence of nonobviousness, may lead to a
conclusion that the claimed invention would not have been obvious to one
with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–1472
(Fed. Cir. 1984). Secondary considerations may include any of the
following: long-felt but unresolved needs, failure of others, unexpected
results, commercial success, copying, licensing, and praise.
There must be a demonstrated “nexus” between the merits of the
claimed invention and the evidence of secondary considerations before that
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evidence is accorded substantial weight in an obviousness determination.
Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575
(Fed. Cir. 1984); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539
(Fed. Cir. 1983); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996);
In re Fielder, 471 F.2d 640, 642 (CCPA 1973). “Nexus” is a legally and
factually sufficient connection between the objective evidence and the
claimed invention, such that the objective evidence should be considered in
determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing
Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). In the absence of an established
nexus with the claimed invention, secondary consideration factors such as
commercial success, satisfaction of a long-felt but unresolved need,
licensing and copying by others are not entitled to much, if any, weight and
generally have no bearing on the legal issue of obviousness. See In re
Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985).
The burden of showing that there is a nexus lies with the Patent
Owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
Patent Owner argues that several of the patents owned by Patent
Owner, including the ’917 patent, were licensed by a substantial portion of
the industry, showing commercial acquiescence and competitor acceptance
of Patent Owner’s licensed patents. PO Resp. 19. The mere existence of
several licensees, without more specific information about the circumstances
surrounding the licensing, is not a good indicator of nonobviousness. In
EWP Corp. v Reliance Universal Inc., 755 F.2d 898, 907–08 (Fed. Cir.
1985), the Court of Appeals for the Federal Circuit stated:
Such [licensing] programs are not infallible guides to
patentability. They sometimes succeed because they are
mutually beneficial to the licensed group or because of business
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judgments that it is cheaper to take licenses than to defend
infringement suits, or for other reasons unrelated to the
unobviousness of the licensed subject matter.

Here, we would want to know the circumstances surrounding the
licenses. Patent Owner directs us to no testimony from any licensee with
regard to why the licensee took a license from Patent Owner. It is unknown
how much of the decision to take a license stems from a business cost-
benefit analysis with regard to defending an infringement suit or from
another business reason, rather than from acknowledged merits of the
claimed invention. Patent Owner also does not disclose how many entities
refused to take a license or why some entities, if any, refused to take a
license. Four licensees may not represent a very successful licensing
program if the field of potential application of Patent Owner’s technology
includes a large number of potential licensees.
Patent Owner also argues that it, through its upgradeable remotes, and
one of its licensees, Logitech, through its Harmony Remotes, has enjoyed
tremendous commercial worldwide success. PO Resp. 20. In particular,
Patent Owner argues that it is a market leader in original equipment
manufacturing of universal remote controls and made approximately $1.6
billion in worldwide gross sales from 2000 to 2013. Id. Patent Owner
argues that Logitech is the established market leader in consumer universal
remote controls since 2007 and that from 2007 through 2014, Logitech
averaged $100 million in worldwide net sales of remote controls, a
substantial number of sales containing the technology of the claimed
invention. Id. at 20–21.
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Patent Owner does not describe for us the components or manner of
operation of the products sold by it or Logitech. Rather, Patent Owner
directs us to several paragraphs from the Ammari Declaration. Ex. 2064.
9

Ammari directs us to claim charts that were created during litigation
between Patent Owner and Logitech, along with several user manuals of
several of Logitech’s remote control products. Id. ¶¶ 20–24. Ammari
testifies that the manuals depict remotes that are upgradeable via a
connection to a computer and that when using a Harmony Remote, a user
uses software or an online service to configure downloaded code data to the
remote control. Id. ¶¶ 23, 24. Such a showing does not establish a nexus
between the alleged commercially successful products and the claimed
invention.
First, we do not know the context of the litigation between Logitech
and Patent Owner, such as whether Logitech agreed to the charge of
infringement. Based on the record before us, Patent Owner has not
established that the infringement charts are meritorious insofar as showing a
nexus is concerned. Moreover, Patent Owner has not shown sufficiently that
any of the Logitech manuals would have conveyed to a user to use
“Logitech’s desktop software or an online service to configure downloaded
code data to the remote control” as Ammari contends. Ex. 2064 ¶ 24. We
do not give much weight to Mr. Ammari’s testimony in this regard because
it is conclusory. He does not direct us to where in any of the manuals there
is a description of configuring a remote control to download code data to the
remote control.

9
At the time of his Declaration, Ammari was employed by Patent Owner
and has been employed by Patent Owner since 1997. Ex. 2064 ¶¶ 1, 4.
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In any event, we do not know why $100 million of Logitech’s or $1
billion of Patent Owner’s sales constitutes commercial success. It is well
established that absolute sale numbers without market share data does not
establish commercial success. See, e.g., In re Huang, 100 F.3d at 140.
Patent Owner’s Response does not discuss and present market share
information.
In addition, Patent Owner must prove that the sales were a direct
result of the unique characteristics of the invention, and not a result of
economic and commercial factors unrelated to the quality of the patent
subject matter. In re Applied Materials, Inc., 692 F.3d 1289, 1299–1300
(Fed. Cir. 2012). In addition, “if the commercial success is due to an
unclaimed feature of the device” or “if the feature that creates the
commercial success was known in the prior art, the success is not pertinent.”
Ormco Corp., v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006); see
also In re Huai-Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011)
(requiring a determination of “whether the commercial success of the
embodying product resulted from the merits of the claimed invention as
opposed to the prior art or other extrinsic factors”). Here, Patent Owner has
not directed us to evidence to explain the reasons for the alleged commercial
success of Logitech’s and Patent Owner’s remote controls.
For all of the foregoing reasons, Patent Owner has failed to establish
the necessary “nexus” between the evidence of alleged commercial success
and the invention claimed.
Conclusion
We have considered the entirety of the evidence before us, including
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the evidence of obviousness and the evidence of licensing and commercial
success submitted by Patent Owner as an indicia of nonobviousness. On
balance, the evidence of obviousness outweighs the evidence of
nonobviousness, with respect to claim 1. The evidence of obviousness is
strong and the evidence of nonobviousness is weak, for the reasons
discussed above. All of Patent Owner’s arguments have been considered.
Petitioner has proved, by a preponderance of the evidence that claim 1 is
unpatentable over the combination of Ciarcia and Hastreiter.
E. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Exhibit 1043 and portions of
Petitioner’s Reply that rely on Exhibit 1043 as not relevant to the
proceeding. PO Mot. to Exclude 1. The parties refer to Exhibit 1043 as a
data sheet for an Intel 8254 Programmable Interval Timer (PIT). Ciarcia
describes a 8254 PIT that is programmed to generate IR signals. Ex. 1005,
118–119. In its Reply, Petitioner relies on Exhibit 1043 to show the details
of the 8254 PIT used in the Ciarcia described device. We did not and need
not consider such arguments or evidence in connection with the Reply. We
have determined that Petitioner has demonstrated, by a preponderance of the
evidence, that claim 1 is unpatentable, without considering Petitioner’s
arguments regarding the details of the Intel 8254 PIT used in the Ciarcia
described device. Accordingly, we dismiss Patent Owner’s Motion to
Exclude.
F. Petitioner’s Motion to Exclude
Petitioner moves to exclude portions of Exhibit 1053 and portions of
Ex. 1054. Exhibits 1053 and 1054 are deposition transcripts of Patent
Owner’s witness, Mr. Alex Cook. With respect to both exhibits, Petitioner
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moves to exclude portions of Mr. Cook’s testimony for, among other
reasons, being unreliable. Pet. Mot. to Exclude, 1. In particular, Petitioner
moves to exclude Exhibit 1053 at 419:1–2, 419:14–15, 420:5–21, 421:8–
422:2, and 422:9–13, and Exhibit 1054 at 745:4–8, 745:15–746:1, 746:13–
747:4, 747:11–16, 747:22, 748:2, 749:10–11, 749:17–21, and 750:23–751:3.
Id.
Petitioner has not shown that Patent Owner relied on either Exhibit
1053 or 1054 in support of its papers filed in this proceeding, nor do we find
that Patent Owner relied on either exhibit in support of its papers filed in this
proceeding. Moreover, Petitioner has not shown that it relied on the
objected to portions of either exhibit in support of its papers filed in this
proceeding, nor do we find that Petitioner relied on the objected to portions
of either exhibit in support of its papers filed in this proceeding. Because we
were not directed to the objected to portions of the evidence in any papers
before us, we did not and need not consider the objected to portions of
Exhibits 1053 and 1054 in rendering this Decision. Accordingly, we dismiss
Patent Owner’s Motion to Exclude.
G. Motions to Seal
Patent Owner and Petitioner each filed several papers (e.g., Paper 14)
and exhibits (e.g., Exhibit 1050) under seal, along with motions to seal
(Papers 16 and 22) and a protective order (Ex. 2065). The motions are
unopposed and are granted.
There is an expectation that information will be made public where
the information is identified in a Final Written Decision, and that
confidential information that is subject to a protective order ordinarily would
become public 45 days after final judgment in a trial, unless a motion to
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expunge is granted. 37 C.F.R. § 42.56; Office Patent Trial Practice Guide,
77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012). In rendering this Final
Written Decision, it was not necessary to identify, nor discuss in detail, any
confidential information. A party who is dissatisfied with this Final Written
Decision may appeal the Decision pursuant to 35 U.S.C. § 141(c), and has
63 days after the date of this Decision to file a notice of appeal. 37 C.F.R.
§ 90.3(a).
In view of the foregoing, the confidential documents filed in the
instant proceeding will remain under seal, at least until the time period for
filing a notice of appeal has expired or, if an appeal is taken, the appeal
process has concluded. The record for the instant proceeding will be
preserved in its entirety, and the confidential documents will not be
expunged or made public, pending appeal. Notwithstanding 37 C.F.R.
§ 42.56 and the Office Patent Trial Practice Guide, neither a motion to
expunge confidential documents nor a motion to maintain these documents
under seal is necessary or authorized at this time. See 37 C.F.R. § 42.5(b).
III. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has
demonstrated, by a preponderance of the evidence, that claim 1 of the ’917
patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Ciarcia and Hastreiter.
IV. ORDER
In consideration of the foregoing, it is
ORDERED that claim 1 of the ’917 patent is held unpatentable;
FURTHER ORDERED that the parties’ respective motions to seal are
granted;
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FURTHER ORDERED that the parties’ respective motions to exclude
evidence are dismissed; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For Petitioner:
Douglas A. Miro
dmiro@ostrolenk.com

Peter Kang
pkang@sidley.com

Theodore Chandler
tchandler@sidley.com

Ferenc Pazmandi
fpazmandi@sidley.com

Keith Barkaus
kbarkaus@ostrolenk.com

For Patent Owner:

Eric Maiers
maierse@gtlaw.com

Michael Nicodema
nicodemam@gtlaw.com

James Lukas
lukasj@gtlaw.com

Robbie Harmer
harmer@gtlaw.com