`Trials@uspto.gov
`571-272-7822 Entered: December 18, 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 IPR2014-01084
`Patent 7,126,468 B2
`____________
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`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.
`
`
`
`IPR2014-01084
`Patent 7,126,468 B2
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`I. INTRODUCTION
`
`We have jurisdiction to hear this inter partes review 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 discussed herein, Petitioner has
`
`shown by a preponderance of the evidence that claims 27, 28, 33, 35, 45, and
`
`49 of U.S. Patent No. 7,126,468 B2 are unpatentable.
`
`A. Procedural History
`
`Petitioner, Universal Remote Control, Inc., filed a Petition for inter
`
`partes review of claims 1, 2, 11, 27–29, 33, 35, 45, 46, and 49 of U.S. Patent
`
`No. 7,126,468 B2 (Ex. 1001, “the ’468 patent”). Paper 1 (“Pet.”). Patent
`
`Owner, Universal Electronics, Inc., filed a Preliminary Response. Paper 8.
`
`On January 9, 2015, we instituted an inter partes review of claims 27, 28,
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`33, 35, 45, and 49 of the ’468 patent on one asserted ground of
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`unpatentability, pursuant to 35 U.S.C. § 314. Paper 9 (“Dec.”).
`
`Subsequent to institution, Patent Owner filed a Patent Owner
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`Response (Paper 16, “PO Resp.”), and Petitioner filed a Reply (Paper 18,
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`“Pet. Reply”). An oral hearing was held on September 2, 2015, and a
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`transcript of the hearing is included in the record (Paper 25, “Tr.”).
`
`B. Related Matters
`
`According to the parties, the ’468 patent is involved in the following
`
`lawsuit: Universal Electronics, Inc. v. Universal Remote Control, Inc.,
`
`No. SACV 13-00984-AG-JPR (C.D. Cal.). Pet. 1; Paper 4, 2.
`
`C. The’468 Patent
`
`The ’468 patent relates to a system and method for monitoring remote
`
`control transmissions. Ex. 1001, 1:15–17. The system includes a command
`
`receiver that monitors remote control transmissions for the purpose of
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`2
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`IPR2014-01084
`Patent 7,126,468 B2
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`updating state tables for one or more remotely controllable appliances.
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`Id. at 2:5–7, 4:25–28. The command receiver may be a device separate from
`
`the appliances, or it may be integrated into one or more appliances.
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`Id. at 4:28–31. The state tables may be maintained in the command receiver
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`or at a location physically separate from the command receiver, such as a
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`personal computer. Id. at 5:20–26. The state tables store parameters
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`representative of one or more states of the appliances. Id. at 4:64–66.
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`Figure 4 of the ’468 patent illustrates examples of state tables for
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`controllable appliances:
`
`
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`As shown in Figure 4, a “state table attempts to reflect the state of an
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`appliance by storing parameters that are indicative of the transmission of
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`commands to an appliance.” Id. at 4:67–5:3. State tables may be queried to
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`determine the present state of an appliance. Id. at 2:7–9.
`
`D. Illustrative Claim
`
`Claims 27 and 35 are independent. Claims 28 and 33 depend from
`
`claim 27, and claims 45 and 49 depend from claim 35. Claim 27 is
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`illustrative of the claimed subject matter:
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`Patent 7,126,468 B2
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`27. A method of updating a data representative of a
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`current state of an intended target appliance, comprising:
`
`
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`receiving a transmission from a remote control; and
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`comparing the transmission from the remote control to a
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`plurality of commands to determine if the transmission from the
`remote control is one for commanding an operation of the
`intended target appliance and to update the data to represent the
`current state of the intended target appliance which will result
`from the intended target appliance performing the operation
`commanded.
`
`Id. at 14:55–64.
`
`E. Ground of Unpatentability
`
`We instituted an inter partes review of claims 27, 28, 33, 35, 45, and
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`49 on the sole ground of anticipation by Cohen2 under 35 U.S.C. § 102(b).
`
`Dec. 10–13, 17–18.
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`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, we construe claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`
`Consistent with the broadest reasonable construction, claim terms are
`
`presumed to have their ordinary and customary meaning as understood by a
`
`person of ordinary skill in the art in the context of the entire patent
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). An inventor may provide a meaning for a term that is different from
`
`its ordinary meaning by defining the term in the specification with
`
`
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`2 U.S. Patent No. 5,235,414, issued Aug. 10, 1993 (Ex. 1005, “Cohen”).
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`4
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`Patent 7,126,468 B2
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
`
`We construe the claim terms below in accordance with these
`
`principles. No other terms require express construction for purposes of this
`
`Final Written Decision.
`
`1. “update”
`
`The term “update” appears in independent claims 27 and 35 in
`
`connection with updating data to represent the current state of a target
`
`appliance that will result when the target appliance performs an operation
`
`specified by a command. See Ex. 1001, 14:61–64, 15:23–26. In our
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`Decision on Institution, we determined that the broadest reasonable
`
`construction of “update” is “bring up to date,” based on the term’s ordinary
`
`and customary meaning. Dec. 7 (citing THE AMERICAN HERITAGE
`
`DICTIONARY OF THE ENGLISH LANGUAGE 1889 (4th ed. 2006)). In so doing,
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`we rejected Patent Owner’s argument that the term should be construed to
`
`mean “rewrite.” Id.
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`Patent Owner does not challenge our construction of “update” in its
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`Patent Owner Response, nor does Petitioner challenge the construction in its
`
`Reply. For this Final Written Decision, after considering the complete
`
`record, we maintain our construction of “update” as “bring up to date.”
`
`2. “state”
`
`Claim 27 is directed to a method of updating “data representative of a
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`state of a target appliance” and recites “updat[ing] the data to represent the
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`current state of the intended target appliance which will result from the
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`intended target appliance performing the operation commanded” by a
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`“transmission from the remote control.” Ex. 1001, 14:55–56, 14:59–64.
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`Patent 7,126,468 B2
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`Claim 35 similarly recites “updat[ing] data whereby the updated data reflects
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`a state of the intended target appliance which will result from the intended
`
`target appliance performing the operation” commanded by a “transmission
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`from the remote control.” Id. at 15:21–26. Petitioner does not propose an
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`express construction for “state” in the Petition, but argues that channel
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`selection is a “state” of a target appliance (e.g., a television) as recited in the
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`claims. Pet. 26, 28. In its Response, Patent Owner does not propose an
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`express construction either, but implicitly construes “state” when it argues
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`that Petitioner has not met its burden of showing that channel selection, as
`
`described in Cohen, is a “state” of a target appliance. PO Resp. 7. In order
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`to determine whether Cohen anticipates the challenged claims, we must
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`construe the claim term “state” and, more specifically, decide whether
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`“state” encompasses channel selection.
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`We begin with the language of the claims, which refers to a state of an
`
`intended target appliance that will result from the appliance performing an
`
`operation commanded by a transmission from a remote control. Ex. 1001,
`
`14:62–63, 15:24–26. Thus, according to the claim language, remote control
`
`transmissions may affect the state of an appliance. This is consistent with
`
`the written description of the ’468 patent, which discloses a system that
`
`monitors remote control transmissions for the purpose of tracking the state
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`of an appliance. Id. at 2:3–7. The ’468 patent further describes a state table
`
`that reflects the state of an appliance by storing parameters that are
`
`indicative of the transmission of commands to the appliance. Id. at 4:67–
`
`5:3, Fig. 4. For example, as shown in Figure 4, state parameters may include
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`power, volume, and mute for a television, and power, play, and fast forward
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`for a VCR. Id. at 5:3–19, Fig. 4.
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`Based on this disclosure, and in response to Patent Owner’s argument
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`that channel selection is not a “state,” Petitioner argues that a “state” as used
`
`in the claims of the ’468 patent is a parameter indicative of the transmission
`
`of commands to an appliance. Pet. Reply 6; Tr. 9:17–21, 10:15–18.
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`Petitioner further asserts that the broadest reasonable interpretation of “state”
`
`encompasses the channel to which an appliance is tuned. Pet. Reply 6. In
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`contrast, Patent Owner suggests that channel selection does not qualify as a
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`“state” because the ’468 patent does not specifically describe it as such.
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`PO Resp. 7.
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`We agree with Petitioner’s construction of “state.” Based on the
`
`claims and written description of the ’468 patent, a state of an appliance is a
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`parameter or set of parameters indicative of transmissions of remote control
`
`commands to the appliance. We also agree with Petitioner that this broadest
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`reasonable construction of “state” encompasses channel selection. Although
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`channel selection is not one of the states shown in Figure 4 of the
`
`’468 patent, the state tables in that figure are merely exemplary. See
`
`Ex. 1001, 2:31–32. Moreover, the channel of an appliance (e.g., a
`
`television) can be selected using a remote control, and thus the selected
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`channel is indicative of transmissions of remote control commands to the
`
`appliance. Finally, Patent Owner has not identified, nor do we see, anything
`
`in the ’468 patent that excludes channel selection from the scope of the
`
`claim term “state.”
`
`B. Anticipation by Cohen
`
`Petitioner contends that claims 27, 28, 33, 35, 45, and 49 are
`
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Cohen. Pet. 25–34.
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`In its Petition, Petitioner explains how Cohen discloses each and every
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`IPR2014-01084
`Patent 7,126,468 B2
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`limitation of the challenged claims. Id. Petitioner also relies on a
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`Declaration of James T. Geier to support the assertions made in connection
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`with the Petition. Ex. 1008.
`
`In response, Patent Owner alleges that the United States Patent and
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`Trademark Office considered Cohen during examination of the ’468 patent
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`and urges us not to “disturb the Patent Office’s prior determination that the
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`claims of the ’468 patent are patentable over Cohen.” PO Resp. 3–4. On the
`
`merits, Patent Owner contends that Cohen fails to disclose certain limitations
`
`of the challenged claims.
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`Having considered the parties’ contentions and supporting evidence,
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`we determine that Petitioner has demonstrated by a preponderance of the
`
`evidence that Cohen anticipates claims 27, 28, 33, 35, 45, and 49 of the
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`’468 patent.
`
`1. Preliminary Matters
`
`At the outset, we address Patent Owner’s argument that the Office
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`previously considered Cohen. See PO Resp. 3–4. The Background section
`
`of the ’468 patent cites Cohen as an example of a prior art system that
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`unobtrusively monitors the tuning of a home entertainment center.
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`Ex. 1001, 18–29. Cohen, however, does not appear on the face of the
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`’468 patent in the list of references cited. Id., at [56]. Nor does the
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`prosecution history indicate Cohen was cited by the applicant in an
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`Information Disclosure Statement or expressly considered by the Examiner.
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`See Pet. 11–12; Pet. Reply 2; Ex. 1002. Based on the evidence in the record,
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`we are not persuaded the Office considered the entire disclosure of Cohen
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`during prosecution. Moreover, although in determining whether to institute
`
`an inter partes review we may take into account whether a prior art
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`reference was presented previously to the Office and have discretion to deny
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`a petition on that basis, see 35 U.S.C. § 325(d), Patent Owner offers no basis
`
`for finding Petitioner failed to establish unpatentability by a preponderance
`
`of the evidence simply because the prior art was previously before the
`
`Office.
`
`Patent Owner also argues as a preliminary matter that the Geier
`
`Declaration does not provide any support or analysis that would assist us in
`
`determining whether Cohen anticipates the challenged claims. PO Resp. 5.
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`According to Patent Owner, “Petitioner’s reliance on the Geier Declaration
`
`is perfunctory and unhelpful.” Id. This argument goes to weight rather than
`
`admissibility of the Declaration. To the extent Mr. Geier’s testimony is
`
`conclusory or unsupported, we weigh it accordingly in our patentability
`
`analysis. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
`
`(holding it is within the Board’s discretion to assign appropriate weight to
`
`each item of evidence); 37 C.F.R. § 42.65(a). We note that Patent Owner
`
`elected not to cross-examine Mr. Geier, and further note that Patent Owner
`
`provides no expert testimony of its own in support of its substantive
`
`arguments.
`
`2. Cohen
`
`Cohen describes a system for monitoring the channel tuning of
`
`different components in a home entertainment center. Ex. 1005, 1:5–15.
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`The disclosed system receives a digital command from a remote control,
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`transfers it to the appropriate component of the entertainment center, and
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`stores for later retrieval information reflecting which component was in use
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`and its channel tuning information. Id. at 2:57–62.
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`Figure 2 of Cohen is reproduced below:
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`
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`Figure 2 is a block diagram of the disclosed monitoring system. Id. at 3:38–
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`40. As shown in Figure 2, each remote control unit 16 emits infrared (“IR”)
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`signals received by receiver 38. Id. at 4:50–51. IR decoder 52 in monitor 34
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`translates the IR signals to signals indicating the component being operated
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`on and in what manner. Id. at 4:51–55. For example, when a remote control
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`for a television is used to change channels, IR decoder 52 transfers the
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`command through bus 51 to microprocessor 53. Id. at 4:55–58.
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`Microprocessor 53 in monitor 34 decodes the input signal and directs a
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`corresponding signal toward transmitter section 40, which transmits an
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`appropriate signal to the television. Id. at 4:55–61. As shown in Figure 2,
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`microprocessor 53 includes random access memory (“RAM”) 60, which
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`stores both information regarding the tuning of the entertainment system for
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`Patent 7,126,468 B2
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`later retrieval and the functions of different remote control signals that have
`
`been learned by the system during a learning phase. Id. at 4:4–5, 5:1–25.
`
`Figure 3 of Cohen is reproduced below:
`
`
`
`Figure 3 is a flowchart illustrating the remote control monitoring performed
`
`by the apparatus shown in Figure 2. Id. at 3:41–43. In step 74,
`
`microprocessor 53 determines whether the IR signal received from remote
`
`control 16 in step 72 is valid (i.e., intended for a device being monitored) so
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`that the event should be logged in step 80. Id. at 5:61–64. Event data
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`11
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`corresponding to valid IR signals are stored in RAM 60, to be retrieved later
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`and reported to a host system. Id. at 6:9–11.
`
`3. Analysis
`
`Petitioner provides detailed analysis showing where Cohen discloses
`
`each limitation of the challenged claims. Pet. 25–34. Beginning with
`
`independent claim 27, Petitioner contends that Cohen discloses the step of
`
`“receiving a transmission from a remote control” (i.e., receiver 38 receiving
`
`infrared signals from remote control units 16). Id. at 26 (citing Ex. 1005,
`
`4:50–51). Petitioner also contends that Cohen discloses the step of
`
`“comparing the transmission from the remote control to a plurality of
`
`commands to determine if the transmission from the remote control is one
`
`for commanding an operation of the intended target appliance.”
`
`Specifically, Petitioner asserts that Cohen’s monitor stores functions (a
`
`plurality of commands) that correspond to the transmission of signals from
`
`remote controls and compares transmissions from a remote control against
`
`the commands maintained within the monitor to check the validity of the
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`transmissions. Id. at 27 (citing Ex. 1005, 5:8–19, 5:61–64). We are
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`persuaded by Petitioner’s arguments that Cohen discloses the “receiving”
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`and “comparing” limitations of claim 27.
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`The parties dispute whether Cohen discloses the remaining limitation
`
`of claim 27, which requires “updat[ing] . . . data to represent the current state
`
`of [an] intended target appliance which will result from the intended target
`
`appliance performing the operation commanded.” Petitioner submits that
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`Cohen meets this limitation because monitor 34, shown in Figure 2, stores
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`channel tuning information in RAM 60 for later retrieval and updates that
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`channel tuning information (i.e., data representing a current state) when a
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`remote control is used to select a channel. Pet. 28 (citing Ex. 1005, 4:4–5,
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`5:22–25). In response, Patent Owner argues that Cohen’s monitor 34 does
`
`not perform the updating operation recited in the claim and that Petitioner
`
`has not shown channel selection is a state of a target appliance. PO Resp. 5–
`
`7. We address Patent Owner’s arguments in turn.
`
`First, Patent Owner contends that to the extent any device in Cohen
`
`updates data representing the state of an appliance, it is not monitor 34, but
`
`instead is the “outside world” central host computer to which Cohen’s
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`system transmits data in step 84 of Figure 3. Id. at 6. Patent Owner explains
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`that the host computer “analyzes and interprets the remote control signal
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`data received from monitor 34 to determine what the viewer is watching.”
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`Id. (citing Ex. 1005, 6:39–42, 6:57–61). As Patent Owner’s counsel
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`acknowledged at oral hearing, however, the claim language does not require
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`analyzing and interpreting data—it merely requires updating data to
`
`represent the current state of an appliance. See Tr. 19. Notably, Patent
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`Owner does not dispute that the monitor in Cohen performs an updating
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`operation when it stores channel tuning information for later transmission to
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`the host computer. See PO Resp. 6–7; Pet. Reply 5. Thus, we are not
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`persuaded by Patent Owner’s argument that the only device in Cohen that
`
`performs an updating operation is the host computer, and not the monitor.3
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`
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`3 We need not, and do not, consider Petitioner’s argument, raised for the first
`time in its Reply, that Cohen discloses the updating operation of claim 27
`because the claim does not require any particular device to perform the
`recited updating operation, and Patent Owner admits that Cohen’s host
`computer performs updating. See Pet. Reply 5. The Petition asserts only
`that Cohen’s monitor performs the updating operation. Pet. 28.
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`Patent Owner also argues that Petitioner has not shown channel
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`selection is a state of a target appliance. PO Resp. 7. As explained in
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`Section II.A.2, however, the broadest reasonable construction of “state” as
`
`used in the claims of the ’468 patent encompasses channel selection as
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`disclosed in Cohen. It is immaterial that Cohen itself does not describe
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`channel selection as a “state,” as Patent Owner argues. See PO Resp. 7.
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`At oral hearing, Patent Owner argued for the first time that Cohen
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`does not disclose updating data representing a state of a target appliance
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`because Cohen’s system only logs remote control transmissions or signals
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`without context that is necessary to determine the state of an appliance. E.g.,
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`Tr. 16:7–21, 17:6–22, 19:3–9, 19:19–21, 22:2–4. Parties are not permitted
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`to raise new arguments at oral hearing. Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In any event, Patent Owner
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`does not provide any citation to the ’468 patent supporting the notion that
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`“state” as used in the challenged claims includes a “context” element. Nor
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`do the claims require determining the state of an appliance. See Pet. Reply 8
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`(responding to argument in the Patent Owner Response with respect to
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`claim 33 that Cohen does not “determine” appliance states (PO Resp. 8)).
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`As for Patent Owner’s contention that Cohen’s system merely logs
`
`remote control transmissions or signals, rather than updating data to
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`represent the current state of an appliance (PO Resp. 6; Tr. 17:8–22, 19:5–6,
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`19:19–21), we disagree. Cohen explains that “[d]ata pertinent to viewing
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`preference is date and time stamped and the information is stored in
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`RAM 60 at step 80 [in Figure 3], to be later retrieved and reported to a host
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`system.” Ex. 1005, 6:9–11. Cohen also indicates that channel tuning
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`information is information stored in RAM 60 for later retrieval. Id. at 5:22–
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`25. Furthermore, Figure 3 shows that Cohen’s monitor logs event data in
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`step 80 and transmits the data to a host computer in step 84. Id. at Fig. 3.
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`Thus, notwithstanding references in Cohen to logging signals, Cohen
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`specifically discloses logging, or updating, channel tuning information,
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`which is data representative of a current state (i.e., selected channel) of a
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`target appliance, as required by claim 27. See Pet. Reply 8.
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`Claim 28 depends from claim 27 and further recites the step of
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`“supplementing the data with information obtained directly from the
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`intended target appliance.” Ex. 1001, 14:65–67. Petitioner shows that in
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`Cohen’s system, On/Off sense 31 (shown in Figure 2) receives information
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`from a system component that has been turned on or off and communicates
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`this information to microprocessor 53 for storage in RAM 60. Pet. 28 (citing
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`Ex. 1005, 5:26–30). Patent Owner does not dispute that this feature of
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`Cohen satisfies the “supplementing” step of claim 28. See PO Resp. 8.
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`Claim 33 also depends from claim 27 and requires the data
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`representing a state of the intended target appliance to be “maintained
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`locally within a device which receives the transmission.” Ex. 1001, 15:10–
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`12. Patent Owner asserts that Cohen does not disclose this claim limitation
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`because the “outside world” host computer stores appliance states. PO
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`Resp. 8–9. As discussed above, however, we are not persuaded by Patent
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`Owner’s argument that the host computer, rather than monitor 34, updates
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`data representing a current state of the target appliance.
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`For the foregoing reasons, based on the record before us, Petitioner
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`has shown by a preponderance of the evidence that Cohen discloses all of
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`the limitations of method claims 27, 28, and 33. Independent claim 35 is
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`directed to “a readable media having instructions for monitoring remote
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`control transmissions” in a “transmission monitoring device,” with “the
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`instructions performing steps” substantially similar to the steps in claim 27.
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`Claims 45 and 49 depend from claim 35 and recite limitations similar to
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`those in claims 28 and 33, respectively. Accordingly, for the same reasons
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`discussed above, Petitioner has shown by a preponderance of the evidence
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`that Cohen discloses all of the limitations of media claims 35, 45, and 49.
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`III. CONCLUSION
`
`Based on the evidence and arguments, Petitioner has demonstrated by
`
`a preponderance of the evidence that claims 27, 28, 33, 35, 45, and 49 of the
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`’468 patent are unpatentable under 35 U.S.C. 102(b) as anticipated by
`
`Cohen.
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`
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`Accordingly, it is:
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`IV. ORDER
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` ORDERED that claims 27, 28, 33, 35, 45, and 49 of U.S. Patent
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`No. 7,126,468 B2 have been shown to be unpatentable; and
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` FURTHER ORDERED that, because this is a final written decision,
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`parties to the proceeding seeking judicial review of the decision must
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`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
`
`Keith J. Barkaus
`kbarkaus@ostrolenk.com
`
`Peter H. Kang
`pkang@sidley.com
`
`Theodore W. Chandler
`tchandler@sidley.com
`
`Ferenc Pazmandi
`fpazmandi@sidley.com
`
`FOR PATENT OWNER:
`
`Eric J. Maiers
`maierse@gtlaw.com
`
`Michael A. Nicodema
`nicodemam@gtlaw.com
`
`James J. Lukas
`lukasj@gtlaw.com
`
`Matthew Levinstein
`levinsteinm@gtlaw.com
`
`Robbie Harmer
`harmer@gtlaw.com
`
`
`17