Paper 8
`Entered: January 16, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`____________
`
`IPR2019-01595 (Patent 8,015,446 B2); and
`IPR2019-01608 (Patent 7,895,532 B2)1
`____________
`
`Before PATRICK M. BOUCHER, MINN CHUNG, SHARON FENICK,
`and RUSSELL E. CASS, Administrative Patent Judges.2
`
`PER CURIAM
`
`
`ORDER
`Granting in Part and Denying in Part Petitioner’s
`Request for Additional Briefing
`37 C.F.R. § 42.5; 37 C.F.R. § 42.108(c)
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`shall not use this heading style in any subsequent papers.
`2 This is not a decision by an expanded panel. Judges Chung, Boucher and
`Cass considered the request in IPR2019-01595, and Judges Fenick, Chung,
`and Boucher considered the request as to IPR2019-01608.
`
`
`Entered: January 16, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`____________
`
`IPR2019-01595 (Patent 8,015,446 B2); and
`IPR2019-01608 (Patent 7,895,532 B2)1
`____________
`
`Before PATRICK M. BOUCHER, MINN CHUNG, SHARON FENICK,
`and RUSSELL E. CASS, Administrative Patent Judges.2
`
`PER CURIAM
`
`
`ORDER
`Granting in Part and Denying in Part Petitioner’s
`Request for Additional Briefing
`37 C.F.R. § 42.5; 37 C.F.R. § 42.108(c)
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`shall not use this heading style in any subsequent papers.
`2 This is not a decision by an expanded panel. Judges Chung, Boucher and
`Cass considered the request in IPR2019-01595, and Judges Fenick, Chung,
`and Boucher considered the request as to IPR2019-01608.
`
`
`
`IPR2019-01595 (Patent 8,015,446 B2); and
`IPR2019-01608 (Patent 7,895,532 B2)
`
`On January 15, 2020, and in response to Petitioner’s email of
`
`January 9, 2020, Judges Boucher, Chung, Fenick, and Cass conducted a
`telephonic hearing with counsel for both parties.
`
`In each proceeding, pursuant to 37 C.F.R. § 42.108(c), Petitioner
`requested leave to file a reply to the Patent Owner’s Preliminary Response.
`In IPR2019-01595, Petitioner requested leave to file a reply to address
`Patent Owner’s proposed claim construction of the term “user interface
`element.” Patent Owner indicated that it does not oppose Petitioner’s
`request, provided that Patent Owner is authorized to file a sur-reply. Finding
`that further briefing would be helpful, we authorized a reply and a sur-reply
`on this issue in the IPR2019-01595 proceeding.
`In IPR2019-01608, Petitioner requested leave to file a reply to address
`two issues raised by the Preliminary Response. First, Petitioner argued that
`it could not have reasonably anticipated Patent Owner’s argument under 35
`U.S.C. § 325(d). Petitioner specifically identified Patent Owner’s contention
`that certain references applied in challenging the claims are materially
`similar to prior art involved during examination of the subject patent. Patent
`Owner argued that the Petitioner could have anticipated and addressed this
`issue in the Petition. Second, Petitioner argued that it could not reasonably
`have anticipated Patent Owner’s claim-construction argument directed at the
`term “causing the automatically created sequence of instructions to be
`executed by the controlling device in response to a selection of a user input
`element of the controlling device.” Patent Owner argued that no
`unanticipated claim construction argument was raised by its Preliminary
`Response. With respect to each issue in the IPR2019-01608 proceeding,
`
`2
`
`
`
`IPR2019-01595 (Patent 8,015,446 B2); and
`IPR2019-01608 (Patent 7,895,532 B2)
`
`Patent Owner indicated that it opposes Petitioner’s request for leave to file a
`reply.
`With respect to the claim construction issue only, finding that further
`briefing would be helpful, we authorized a reply and a sur-reply in the
`IPR2019-01608 proceeding. However, with respect to the § 325(d) issue,
`we did not authorize additional briefing. In the Petition, Petitioner addressed
`35 U.S.C. § 325(d) and cited a precedential decision that includes a non-
`exclusive list of factors we weigh in evaluating whether to use our discretion
`under § 325(d). IPR2019-01608, Paper 2 at 55 (citing Becton, Dickinson &
`Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB
`Dec. 15, 2017) (designated precedential as to § III.C.5, first para.; also
`generally designated informative)). This list includes “the similarities and
`material differences between the asserted art and the prior art involved
`during examination” and “the cumulative nature of the asserted art and the
`prior art evaluated during examination.” Becton, Dickinson, Paper 8 at 17
`(precedential portion). Petitioner could have expected that these issues
`would be relevant. In fact, Petitioner provides related arguments in its
`characterization of the prior art presented in the Petition and in the rationale
`for including each of the three grounds presented in the Petition. IPR2019-
`01608, Paper 2 at 15, 55–56. Therefore, with respect to a reply to further
`address discretion under 35 U.S.C. § 325(d) in IPR2019-01608, we found no
`showing of good cause, and Petitioner’s request was denied.
`Accordingly, it is:
`ORDERED that, no later than Friday, January 24, 2020, Petitioner is
`authorized to file in IPR2019-01595 a Reply to the Patent Owner
`
`3
`
`
`
`IPR2019-01595 (Patent 8,015,446 B2); and
`IPR2019-01608 (Patent 7,895,532 B2)
`
`Preliminary Response addressing only claim construction of the term “user
`interface element”;
`FURTHER ORDERED that, no later than Friday, January 31, 2020,
`Patent Owner is authorized to file in IPR2019-01595 a responsive Sur-reply;
`FURTHER ORDERED that, no later than Friday, January 24, 2020,
`Petitioner is authorized to file in IPR2019-01608 a Reply to the Patent
`Owner Preliminary Response addressing only claim construction of the term
`“user interface element”;
`FURTHER ORDERED that, no later than Friday, January 31, 2020,
`Patent Owner is authorized to file in IPR2019-01608 a responsive Sur-reply;
`FURTHER ORDERED that the above papers are limited to 5 pages
`each; and
`FURTHER ORDERED that Petitioner’s request in IPR2019-01608 to
`file a reply to address discretion under 35 U.S.C. § 325(d) is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2019-01595 (Patent 8,015,446 B2); and
`IPR2019-01608 (Patent 7,895,532 B2)
`
`PETITIONER:
`
`David Obrien
`david.obrien.ipr@haynesboone.com
`
`Raghav Bajaj
`raghav.bajaj.ipr@haynesboone.com
`
`Philip W. Woo
`philip.woo.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`Benjamin S. Pleune
`ben.pleune@alston.com
`
`Ryan W. Koppelman
`ryan.koppelman@alston.com
`
`Thomas W. Davison
`tom.davison@alston.com
`
`James H. Abe
`james.abe@alston.com
`
`Caleb J. Bean
`caleb.bean@alston.com
`
`Derek S. Neilson
`derek.neilson@alston.com
`
`Nicholas T. Tsui
`nick.tsui@alston
`
`
`5
`
`
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