Trials@uspto.gov
`571.272.7822
`
`Paper No. 39
`Filed: September 25, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS INTERNATIONAL PLC, ARRIS GLOBAL LTD.,
`PACE AMERICAS, LLC, PACE AMERICAS HOLDINGS, INC., and
`PACE AMERICAS INVESTMENTS, LLC,
`Petitioner,
`
`v.
`
`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00835
`Patent 6,084,643
`____________
`
`
`Before JENNIFER S. BISK, BART A. GERSTENBLITH, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`571.272.7822
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`Paper No. 39
`Filed: September 25, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS INTERNATIONAL PLC, ARRIS GLOBAL LTD.,
`PACE AMERICAS, LLC, PACE AMERICAS HOLDINGS, INC., and
`PACE AMERICAS INVESTMENTS, LLC,
`Petitioner,
`
`v.
`
`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00835
`Patent 6,084,643
`____________
`
`
`Before JENNIFER S. BISK, BART A. GERSTENBLITH, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2016-00835
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`INTRODUCTION
`
`A. Background
`Petitioner, listed above, filed a Petition requesting inter partes review
`of claims 1–4 (the “challenged claims”) of U.S. Patent No. 6,084,643 (issued
`July 4, 2000) (Ex. 1001, “the ’643 patent”). Paper 2 (“Pet.”). Sony
`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). On September 29, 2016, we granted the Petition,
`instituting trial on whether the challenged claims would have been obvious
`over the combination of (1) Wasilewski,1 Rosenberger,2 and Ishikawa,3 and
`(2) Wasilewski and Ejima.4 Paper 10 (“Institution Decision” or “Inst.
`Dec.”). Patent Owner filed a Request for Rehearing of the Institution
`Decision (Paper 13, “Reh’g Req.”) and we denied that Request (Paper 21,
`“Reh’g Dec.”).
`Following institution, Patent Owner filed a Response (Paper 22, “PO
`Resp.”), Petitioner filed a Reply (Paper 26, “Reply”), and, with authorization
`from the panel (Paper 29), Patent Owner filed a Sur-Reply (Paper 32, “Sur-
`Reply”). We held an oral hearing on June 29, 2017. Paper 37 (“Tr.”). After
`the hearing, we authorized Patent Owner to file a 3-page Notice of
`Supplemental Authority related to the Federal Circuit’s decision in IPCom
`GmbH & Co. v. HTC Corp., 861 F.3d 1362 (Fed. Cir. 2017), which issued
`after the hearing. Paper 35 (“Supp. Auth.”). We authorized Petitioner to file
`a 3-page response. Paper 36 (“Resp. Supp. Auth.”).
`
`
`1 U.S. Patent No. 5,600,378; Feb. 4, 1997 (Ex. 1005) (“Wasilewski”).
`2 EP 0612150 A2; Feb. 12, 1994 (Ex. 1007) (“Rosenberger”).
`3 U.S. Patent No. 5,315,392; May 24, 1994 (Ex. 1020) (“Ishikawa”).
`4 A certified English translation of Japanese Unexamined Patent Application
`Pub. No. H7-131727; May 19, 1995 (Ex. 1010) (“Ejima”).
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`2
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`This is a Final Written Decision pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons set forth the below, we conclude that
`Petitioner has shown by a preponderance of evidence that the challenged
`claims are unpatentable.
`
`B. Related Matters
`The parties indicate that the ’643 patent is involved in litigation in the
`District of Delaware. Pet. 1; Paper 5, 2.
`
`C. The ’643 Patent
`The ’643 patent relates to a method for swiftly selecting a desired
`television channel. Ex. 1001, Abstract. In particular, the ’643 patent
`addresses the problem, in digital television broadcasting, in which
`continuously pressing the up/down channel button on a remote leads to a
`delay in the display of each of the selected channels. Id. at 1:25–32. This
`delay occurs because digital television pictures and sounds are broadcast in a
`compressed format, which the receiving equipment has to expand in order to
`display the programming of that channel. Id. at 1:28–36. Because switching
`channels in a sequential order using an up/down button causes the display of
`programming for each successively selected channel, the user may encounter
`significant delay—up to two to three seconds—between each channel
`switch. Id. at 1:18–37. This is inconvenient when the user wishes to quickly
`move through successive channels without necessarily seeing each channel’s
`programming.
`In response to this problem, the ’643 patent describes receiving
`equipment with stored network information tables (“NITs”) mapping
`“service_id[s]” to the particular channel number to display. Id. at 6:56–7:19.
`The remote transmits the relevant service_id along with actual program data
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`to the receiving equipment when a user selects a channel. Id. at 7:25–34,
`Fig. 8. If the up/down keys are continuously pressed, only the channel
`number displayed on the screen is changed—the programming for the
`channel is not displayed. Id. at 7:62–8:3. Only when the user stops pressing
`the up/down key is the programming for that channel displayed. Id. at 8:8–
`23.
`
`Of the challenged claims, only claim 1 is independent. Claims 2–4
`depend directly from claim 1. Claim 1 recites:
`1. A receiving equipment comprising:
`transmission signal receiving means for receiving transmission
`signals including a plurality of channels;
`command receiving means for receiving a command from a
`channel selection key operated by a user;
`channel number display control means operative in accordance
`with the command received by the command receiving
`means commanding to switch the channels in a
`predetermined order for switching channel numbers being
`displayed in the predetermined order;
`control means for controlling the transmission signal receiving
`means to receive the transmission signal of a channel
`indicated by the channel number being displayed when the
`command received by the command receiving means is
`broken,
`wherein the channel numbers being switched are displayed
`without displaying a channel selection until operation of the
`channel selection key is discontinued by the user; and
`storage means for storing a plurality of the channel numbers
`representing channels of transmission signals actually
`received, wherein the channel number display control means
`switches the channel numbers being displayed based on the
`channel numbers stored in the storage means.
`
`Ex. 1001, 10:2–30 (emphasis added).
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`4
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`ANALYSIS
`
`A. Legal Principles
`To prevail in an inter partes review, a petitioner must prove the
`unpatentability of the challenged claims by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “[T]he petitioner has the burden
`from the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). The burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review). Furthermore, a petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
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`the art; and (4) objective evidence of non-obviousness, i.e., secondary
`considerations.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We analyze the instituted grounds of unpatentability in accordance with the
`principles stated above.
`
`B. Claim Construction
`We construe all terms, whether or not expressly discussed here, using
`the broadest reasonable construction in light of the ’643 patent specification.
`37 C.F.R. § 42.100(b). The parties propose constructions for only the
`control means limitation. Prelim. Resp. 3–7; PO Resp. 9–15; Reply 7–13.
`Other than the claim terms discussed below, we do not find express
`construction required to resolve the issues in this proceeding. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(holding that only terms that are in controversy need to be construed, and
`then only to the extent necessary to resolve the controversy).
`
`1. The Control Means Limitation
`The parties’ dispute in this case focuses on one particular limitation—
`“control means for controlling the transmission signal receiving means to
`receive the transmission signal of a channel indicated by the channel number
`being displayed when the command received by the command receiving
`means is broken” (the “control means limitation”)—recited by claim 1 and
`inherited by claims 2–4. Prelim. Resp. 3–7; PO Resp. 9–15; Reply 7–13;
`Sur-Reply 2–4.
`
`
`5 Neither Petitioner nor Patent Owner introduced objective evidence of non-
`obviousness or argued that the existence of secondary considerations weighs
`in favor of non-obviousness. Accordingly, our analysis is based upon three
`of the four Graham factors.
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`The parties appear to agree, at least for purposes of this proceeding,
`on the broadest reasonable construction of the control means limitation.
`First, there is no dispute that the “control means” limitation is subject to
`means-plus-function treatment pursuant to 35 U.S.C. § 112 ¶ 6.6 Pet. 18–19;
`PO Resp. 1. Second, there is no dispute that the function of this term is
`coextensive with the language of the claim—“controlling the transmission
`signal receiving means to receive the transmission signal of a channel
`indicated by the channel number being displayed when the command
`received by the command receiving means is broken.” Pet. 18; PO Resp. 16.
`Third, in post-institution briefing, the parties appear to agree that, for
`purposes of this proceeding, the corresponding structure disclosed in the
`’643 patent is “a CPU implementing the algorithmic structure described in
`the specification at least at 7:58-8:10; and 9:15-30, and equivalents thereof.”
`See, e.g., Reply 3; Sur-Reply 2; Tr. 4:10–19, 23:3–16.
`This construction, adopted in the Institution Decision (Inst. Dec. 5–8),
`was proposed by Patent Owner in its Preliminary Response (Prelim. Resp.
`3–7). In the Institution Decision, we agreed that Patent Owner’s proposed
`construction reflects the broadest reasonable interpretation of the “control
`means” limitation. Inst. Dec. 5–8. We, however, did not agree with Patent
`Owner’s contention that “[n]o inter partes review can be instituted here
`because the Petitioners have failed to properly construe a critical means-
`plus-function term and thus failed to demonstrate how the challenged claims
`
`
`6 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶¶ 1, 2, and 6 as
`35 U.S.C. § 112(a), (b), and (f), respectively. Because the ’643 patent has a
`filing date before September 16, 2012 (effective date), we refer to the pre-
`AIA version of 35 U.S.C. § 112.
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`could possibl[y] read on the prior art.” Id. at 7 (quoting Prelim. Resp. 7).
`We explained that although the Petition states that “a POSITA would
`understand the corresponding structure to be: ‘a central processing unit
`(CPU), or equivalent’” in the section construing this limitation, that same
`section of the Petition also discusses the relevant algorithm and points to
`relevant portions of the ’643 patent. Id. at 6–7 (citing Pet. 18–19).
`Accordingly, we found that, overall, Petitioner properly gave notice to
`Patent Owner of an understanding that the structure corresponding to the
`control means limitation is equivalent to the relevant algorithm. Id. at 7.
`Yet, even if the Petition did not give Patent Owner notice of such an
`understanding, there can be no question that after our Institution Decision,
`Patent Owner was on notice that we considered Patent Owner’s proposed
`construction to be the broadest reasonable construction for purposes of this
`proceeding. See In re NuVasive, Inc., 841 F.3d 966, 972 (Fed. Cir. 2016)
`(holding that although the Petition “did not make a clear or direct
`reference . . . or a clear or direct assertion” to a particular figure in the prior
`art as disclosing a limitation, “the citation of the text discussing Figure 18”
`plus the indirect reference to the limitation, “should have put [Patent Owner]
`on notice that it was obliged to use its Patent Owner Response to address”
`the issue).
`Patent Owner, however, argues that “when the Petitioners expressly
`propose a construction for a claim term (like the ‘control means’ here), the
`Patent Owner and the Board are entitled to take the Petitioners at their word
`and rely on that proposed construction as the Petitioners’ position.” PO
`Resp. 13–14. To the extent Patent Owner is arguing that the Board, in
`instituting an inter partes review, may never adopt a construction different
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`than that proposed in the Petition, the case law indicates otherwise. See,
`e.g., Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019,
`1028–29 (Fed. Cir. 2017) (explaining that “[i]f the [AIA] statute prohibited
`the Board from ever determining that a claim was unpatentable under a
`construction that the petitioner had not addressed in its submissions, remand
`would have been inappropriate in [SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016), cert. granted on other grounds]” and noting
`that “the petitioner [in Rovalma] had clear notice that the Board might adopt
`the claim construction ultimately adopted . . . yet it did not present a case for
`unpatentability under that construction when it had the opportunity, in its
`Reply”) (citing SAS Inst., 825 F.3d at 1351); Securus Techs., Inc. v. Global
`Tel*Link Corp., Nos. 2016-1992, 2016-1993, 2017 WL 1458867, at *4 (Fed.
`Cir. Apr. 25, 2017) (designated nonprecedential) (“Securus argues only that
`because Global did not advance this particular argument in its petition, the
`Board was not permitted to rely on the argument in its final decision. We
`find Securus’s argument unpersuasive.”); Genzyme Therapeutic Prods. v.
`Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016) (“There is no
`requirement, either in the Board’s regulations, in the APA, or as a matter of
`due process, for the institution decision to anticipate and set forth every legal
`or factual issue that might arise in the course of the trial.”); see also
`Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1375–79
`(Fed. Cir. 2017) (adopting a construction different than that proposed by
`both Petitioner and Patent Owner and, nonetheless, holding that a
`preponderance of the evidence supports a finding of anticipation); SAS
`Institute, 825 F.3d at 1351–52 (noting that the Board is free to adopt a
`construction in the final decision that was not proposed by either party, but
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`remanding the case so that the Board could hear from Petitioner on the
`newly adopted construction).
`Although “broad, general statements” in a petition may not give a
`patent owner sufficient notice of specific arguments, here the Petition
`included discussion of an algorithm in the relevant claim construction
`section and pointed to specific, relevant portions of the reference for support.
`See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d
`1341, 1348 (Fed. Cir. 2017); Pet. 18–19. Moreover, here, even if the
`Petition alone does not give sufficient notice of the claim construction at
`issue, there can be no dispute that the Institution Decision made the claim
`construction explicit. Inst. Dec. 4–8; see also Reh’g Req.; PO Resp. 9–15;
`Tr. 11:10–17 (Petitioner’s counsel discussing the “Board’s construction,”
`which is “not in dispute here”), 23:14–22 (Patent Owner’s counsel agreeing
`that the “control means requires a processing element that implements an
`algorithm, and we identified that in the preliminary response, which includes
`this”).
`As explained by EmeraChem, an institution decision’s “general
`statement that lists all challenged claims and all asserted prior art,” may be
`insufficient notice to a patent owner that “each of the claims may be obvious
`over any combination of all listed prior art.” EmeraChem, 859 F.3d at
`1348–49. On the other hand, an institution decision that recognizes a
`deficiency in a petition and expressly describes the assumptions to be used
`in the inter partes review does not preclude a finding that the identified
`claims are unpatentable based on a reference the petition did not identify as
`grounds for those claims. Id. at 1349–50 (citing In re Cuozzo Speed Techs.,
`LLC, 793 F.3d 1268 (Fed. Cir. 2015), aff’d 136 S. Ct. 2131 (2016)). Here,
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`as in Cuozzo, the Institution Decision recognizes a deficiency in the Petition
`and expressly articulates the claim construction to be used in the subsequent
`inter partes review. See Inst. Dec. 5–8.
`In fact, the sequence of events in this case mirrors those in a case
`affirming the Board’s finding of unpatentability. Skky, Inc. v. MindGeek,
`s.a.r.l., 859 F.3d 1014 (Fed. Cir. 2017). Specifically, in Skky, the Federal
`Circuit held that although the institution decision adopted a different
`construction than that advanced in the petition, the Board did not abuse its
`discretion by refusing the patent owner’s motion to strike the petitioner’s
`reply brief, which argued that under the Board’s construction, the claims
`were nonetheless unpatentable. Id. at 1018, 1022–23. Although in Skky, the
`patent owner did not contend that it lacked notice and the ability to respond
`to any particular argument, the Federal Circuit noted that “indeed, Skky filed
`a surreply addressing the means-plus-function argument.” Id. at 1023.
`Similarly, in Spherix, Inc. v. Matal, the Board instituted trial
`employing the petitioner’s proposed claim construction for several terms,
`including “first processor means” and “second processor means.” Spherix,
`Inc. v. Matal, No. 2016-1790, 2017 WL 3142330, at *1–2 (Fed. Cir. July 25,
`2017) (designated nonprecedential). This construction gave the terms their
`plain and ordinary meaning assuming that they should not be construed as
`means-plus-function limitations. Id. at *1. Subsequently, a district court, in
`related proceedings, issued an order construing those terms as means-plus-
`function limitations and identified the corresponding structure from the
`specification. Id. at *2. In its final written decision, the Board indicated that
`its patentability determination with respect to the processor means elements
`was the same, regardless of which claim construction applied. Id. On
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`appeal, the Federal Circuit determined that “Spherix had adequate notice of
`the Board’s alternative means-plus-function construction and analysis
`because Spherix itself introduced that construction following institution and
`argued that it should apply.” Id. at *3. Here too, Patent Owner introduced
`the construction of the term at issue in its Preliminary Response. Paper 8, 3–
`7. And, unlike Spherix, here Patent Owner had the additional benefit of the
`Institution Decision’s adoption of that construction. We, therefore, do not
`agree with Patent Owner’s implied argument that an institution decision
`either must adopt, without elaboration or modification, every claim
`construction advanced in a petition or else enter judgment in favor of a
`patent owner.
`Patent Owner had the opportunity to respond to the Institution
`Decision’s claim construction both in its Patent Owner Response and its
`Sur-Reply. We are, therefore, not persuaded that the Institution Decision’s
`construction was improper. Accordingly, for this Decision we construe the
`control means limitation as proposed by Patent Owner in its Preliminary
`Response and as we adopted in the Institution Decision—governed by § 112
`¶ 6 with a function of “controlling the transmission signal receiving means
`to receive the transmission signal of a channel indicated by the channel
`number being displayed when the command received by the command
`receiving means is broken” and a corresponding structure of “a CPU
`implementing the algorithmic structure described in the specification at least
`at 7:58–8:10; and 9:15–30, and equivalents thereof.” Inst. Dec. 6.
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`We address below, the related, but separate,7 question of whether,
`using the correct construction of the claim term, a preponderance of the
`evidence supports a finding of unpatentability.
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`2. The Remaining Means Limitations
`The challenged claims recite several other limitations using “means
`for” terminology. The Petition proposes constructions for these limitations
`including both the function and corresponding structure of those terms.
`Pet. 15–20. Patent Owner does not address the construction of these terms.
`See PO Resp.; Sur-Reply. We agree with and adopt Petitioner’s proposed
`constructions as set forth below.
`Claim Term
`Function
`transmission
`receiving transmission
`signal
`signals including a plurality
`receiving
`of channels
`means . . .
`
`Corresponding Structure
`a front end comprising a tuner, or
`equivalent Pet. 15–16 (citing
`Ex. 1001, Fig. 1, 2:43–50
`(describing an integrated
`receiver/decoder for receiving
`satellite signals), Fig. 3, 3:28–35
`(tuner of a front end demodulates
`an RF signal), 6:18–24; Ex. 1003
`¶¶ 106–108).
`front panel keys, or an IR
`(infrared) signal receiving unit, or
`equivalent
`Pet. 16–17 (citing Ex. 1001, Fig.
`2, 4:37–42, 6:8–13; Ex. 1003
`¶¶ 109–111).
`
`command
`receiving
`means . . .
`
`receiving a command from
`a channel selection key
`operated by a user
`
`
`7 See, e.g., Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343,
`1351 (Fed. Cir. 2001) (explaining that, like infringement, an obviousness
`analysis includes two steps—first, claim construction, and second,
`determination of whether the prior art renders obvious the claimed
`invention).
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`channel
`number
`display
`control means
`. . .
`
`storage means
`. . .
`
`controlling display of
`channel numbers in
`accordance with commands
`received by the command
`receiving means
`commanding to switch the
`channels in a predetermined
`order for switching channel
`numbers being displayed in
`the predetermined order
`storing a plurality of the
`channel numbers
`representing channels of
`transmission signals
`actually received
`
`CPU and MPEG decoder with
`OSD (on-screen display), or
`equivalent
`Pet. 17–18 (citing Ex. 1001, Fig.
`8, 7:39–55, 9:6–12; Ex. 1003
`¶¶ 112–114).
`
`an EEPROM (electrically
`erasable programmable read only
`memory) or equivalent Pet. 19–
`20 (citing Ex. 1001, 6:56–7:33,
`8:47–65; Ex. 1003 ¶¶ 118–120).
`
`3. Order of Magnitude of the Channel Numbers
`Dependent claim 2 recites: “The receiving equipment as claimed in
`claim 1, wherein the channel number display control means switches the
`channels in the order of magnitude of the channel numbers.” Ex. 1001,
`10:31–33 (emphasis added). In the interest of clarity, we address the
`broadest reasonable construction of this term, which was briefly discussed at
`the oral hearing. In the context of the claim language, we are persuaded that
`the broadest reasonable construction of “order of magnitude of the channel
`numbers” includes the “sequential order” of the channel number. See
`Tr. 9:1–15 (Petitioner’s counsel agreeing with this construction), 24:7–12
`(Patent Owner’s counsel declining to give an opinion on the issue).
`The specification does not explicitly define the term, but is consistent
`with a construction that includes an arrangement of items by relative size.
`See, e.g., Ex. 1001, 1:61–63 (“The channel number display control means
`may switch the channels in the magnitude order of the channel numbers.”);
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`8:54–57 (“[T]he service_ids are stored in the order of the magnitude thereof,
`and incrementing the pointer by one and acquiring the service_id in the area
`indicated by the pointer can acquire a second larger service_id.” (emphasis
`added)).
`Accordingly, we adopt a broadest reasonable construction of “order of
`magnitude of the channel numbers” that includes the “sequential order” of
`the channel number.
`
`C. Level of Ordinary Skill in the Art
`Petitioner adopts the definition of a person of ordinary skill in the art
`set forth by Dr. Samuel H. Russ. Pet. 8. Dr. Russ states that such a person
`would have had “at least a bachelor’s degree in digital electronics, electrical
`engineering, computer engineering, computer science, or a related technical
`degree with several years (e.g., 2–5 years) of post-degree experience in a
`similar field” or, alternatively, “an advanced degree, such as a Master’s
`Degree, in digital electronics, electrical engineering, computer engineering,
`computer science, or a related technical degree.” Ex. 1003 ¶ 36. Patent
`Owner does not address this issue. See PO Resp.; Sur-Reply.
`Petitioner’s assessment appears consistent with the level of ordinary
`skill in the art at the time of the invention as reflected in the prior art raised
`in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001) (acknowledging that the prior art itself may reflect an appropriate
`level of ordinary skill in the art). Accordingly, we adopt Petitioner’s
`definition of a person of ordinary skill in the art.
`
`D. Overview of Wasilewski
`Wasilewski is a patent that describes adapting the MPEG-2 Systems
`Standard in order to accommodate additional services for subscribers of
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`IPR2016-00835
`Patent 6,084,643
`
`digital video programming. Ex. 1005, 2:29–3:18. Figure 1 of Wasilewski is
`reproduced below.
`
`
`Figure 1 is a block diagram of a modified MPEG-2 decoder. Ex. 1005,
`4:24–26. Tuner 12 is tuned by decoder 10 to the frequency carrying the
`desired digital programming. Id. at 4:65–66. The stream of programming is
`provided to system data processor 14 and demultiplexer 16. Id. at 5:2–17.
`A subscriber selects a channel using remote control unit 26, which provides
`a Logical Channel Number (LCN) and program number (PN) to service
`selection switch 30, which “may comprise an infrared transceiver” and “a
`display device which displays the channel selection to the user.” Id. at 6:23–
`34. Service selection switch 30 provides the LCN to Logical Channel Table
`(LCT) 32. Id. at 6:34–36.
`
`E. Overview of Rosenberger
`Rosenberger describes an analog television receiver “in which
`program selection occurs by means of so-called up and down buttons.”
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`IPR2016-00835
`Patent 6,084,643
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`Ex. 1007, [57]. When “channels are rapidly run through in the direction of
`lower or higher program location numbers,” “a rolling display of the
`program location number takes place on a display and the tuner is only tuned
`to the reception frequency corresponding to the newly set program location
`number after termination of the program selection or switching process.” Id.
`
`F. Overview of Ishikawa
`Ishikawa discloses an “Apparatus for Display and Selection of
`Available Television Channels.” Ex. 1020, [54]. Ishikawa describes
`memory EEPROM 14 that “stores a television channel list of channel
`numbers in relation to captions representing the names or abbreviations of
`the respective registered television channels or stations.” Id. at 2:37–48.
`“[A]fter the receipt of the channel selection command signal,”
`“microcomputer 13 reads the ‘CHANNEL GUIDE’ menu out of the
`memory 14 and displays the read ‘CHANNEL GUIDE’ menu on the cathode
`ray tube 18.” Id. at 3:25–29.
`
`G. Overview of Ejima
`Ejima discloses a TV receiver “that permits rapid tuning to the desired
`broadcast by a simple operation similar to sequential tuning.” Ex. 1010,
`Abstract. Specifically,
`[w]hen the channel up key or channel down key is held
`continuously, the TV receiver in this invention renders it
`possible to rapidly select the desired broadcast by first
`sequentially tuning a designated number of broadcasting
`channels and then halting tuning processing involving the
`switching of channels while continuing sequential up/down
`display of channel numbers.
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`Id. ¶ 15. This continues until the user “releases the up/down key at a
`designated channel number, upon which the channel number at which the
`key was released is received.” Id. ¶ 20.
`
`H. Obviousness over Wasilewski, Rosenberger, and Ishikawa
`Petitioner asserts that a person of ordinary skill in the art would have
`found the challenged claims obvious over the combination of Wasilewski,
`Rosenberger, and Ishikawa. Pet. 20–36 (citing Ex. 1003 (Declaration of
`Dr. Russ)). Specifically, Petitioner relies on Wasilewski for disclosing at
`least a portion of every limitation of the challenged claims. Id. at 20–34.
`Petitioner additionally relies on the following disclosures: (1) Rosenberger
`for the channel number display control means (id. at 22, 27–28), the control
`means limitation (id. at 22–24, 28–29), and the additional limitation added
`by claims 2 and 3 (id. at 31–34); and (2) Ishikawa for the storage means
`limitation (id. at 25, 30–31). Finally, Petitioner explains why a person of
`ordinary skill would have combined the teachings of the three references.
`Id. at 34–36.
`As explained below, we agree with and adopt Petitioner’s analysis and
`determine that Petitioner has shown, by a preponderance of the evidence,
`that the challenged claims would have been obvious over the combined
`teachings of Wasilewski, Rosenberger, and Ishikawa. We have reviewed
`both parties’ arguments and supporting evidence, including the disclosure of
`all three references and the testimony of Dr. Russ.8 Pet. 20–36; PO Resp. 9–
`
`
`8 In its Preliminary Response, Patent Owner included testimony from
`Dr. Robert Stevenson. Ex. 2002. After institution, on March 29, 2017,
`Patent Owner informed the Board via email that it was withdrawing
`Dr. Stevenson’s Declaration in both this case and a related case—IPR2016-
`00834. See ARRIS Int’l plc v. Sony Corp., Case IPR2016-00834, Paper 52 at
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`18
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`23; Reply 14–17; Sur-Reply 2–7; Ex. 1003. For the reasons discussed
`below, we do not agree with Patent Owner’s arguments to the contrary.
`
`1. Wasilewski, Rosenberger, and Ishikawa Together Teach
`Each of the Uncontested Limitations of the Challenged
`Claims
`We discuss each of the limitations of claim 1 in detail below, leaving
`for last the control means limitation, the only limitation addressed by Patent
`Owner.
`First, Wasilewski describes an MPEG decoder (decoder 10 of
`Figure 1) and a tuner (tuner 12 in Figure 1) that receive an MPEG-2 stream
`composed of one or more programs on multiple frequencies. Ex. 1005,
`Fig. 1, 1:23–29, 4:51–55, 4:65–5:2. We agree with Petitioner that this
`description discloses the transmission signal receiving means limitation as
`we have construed that term because Wasilewski’s MPEG decoder is
`equivalent to a front end tuner. Pet. 20–21, 26 (citing Ex. 1003 ¶¶ 138–142).
`Second, Wasilewski describes a service selection switch 30, which
`“may comprise an infrared transceiver for receiving the [Logical Channel
`Number] from the remote control unit 26.” Ex. 1005, Fig. 1, 6:28–33. We
`agree with Petitioner that this description discloses the command receiving
`means as we have construed that term because Wasilewski’s service
`selection switch 30 is equivalent to an IR signal receiving unit. Pet. 21, 27
`(citing Ex. 1003 ¶¶ 143–146).
`
`
`15:21–23 (PTAB Aug. 7, 2017) (confirming withdrawal of Dr. Stevenson’s
`Declaration). Consistent with this notification, Patent Owner did not rely on
`this testimony in any of its post-filing briefs. We, therefore, did not consider
`Dr. Stevenson’s Declaration for purpo
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