Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: March 15, 2021
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner,
`v.
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 14
`Entered: March 15, 2021
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner,
`v.
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`
`I.
`
`INTRODUCTION
`
`Roku, Inc. (“Petitioner”) filed a Request for Rehearing (Paper 13,
`“Request” or “Req.”) of our Decision (Paper 12, “Decision” or “Dec.”) not
`to institute an inter partes review of claim 10 of U.S. Patent No. 7,895,532
`(“the ’532 patent”). For the reasons that follow, we deny Petitioner’s
`Request.
`
`II.
`
`THE REQUEST FOR REHEARING
`
`37 C.F.R. § 42.71(d) provides that:
`A party dissatisfied with a decision may file a request for
`rehearing. The burden of showing a decision should be modified
`lies with the party challenging the decision. The request must
`specifically identify all matters the party believes the Board
`misapprehended or overlooked, and where each matter was
`previously addressed in a motion, opposition, or a reply.
`See Office Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21, 2019))
`(emphasis added). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision
`on petition, a panel will review the decision for an abuse of discretion.” An
`abuse of discretion occurs when a “decision was based on an erroneous
`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
`judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., Inc., 840
`F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted)).
`Thus, a request for rehearing is not an opportunity merely to disagree
`with the Board’s assessment of the arguments or weighing of the evidence,
`or to present new arguments or evidence.
`
`2
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`
`III. ANALYSIS
`
`Claim Construction
`A.
`In its Request for Rehearing, Petitioner contends that, when we
`explained that user generated macros are not within the scope of using a
`program to automatically create the sequence of instructions, we erred,
`stating:
`The Decision misapprehends or overlooks the Petition’s
`articulated distinction between (i) a sequence of instructions
`which the claims require to be “automatically created” using a
`program, (ii) user actions or interactions that are reflected in the
`automatically created sequence of instructions, and (iii) a macro,
`a term that never appears in the claims.
`Req. 1. Petitioner argues our Decision “overlooks the actual words of the
`claim in controversy, ‘using a program to automatically create the sequence
`of instructions,’ and instead leverages an interpretation of the word ‘macro,’
`which is indisputably not a claim term,” and thus “misapprehends the
`actually disputed claim language.” Id. at 3. Petitioner further contends that,
`in our Decision, we agreed that “user actions (again, inputs or interactions)
`are the feedstock of the claimed automatic creation of the sequence of
`instructions.” Id. at 2 (citing Dec. 11). According to Petitioner, our
`Decision then overlooked our findings and “conflate[d] ‘instructions’ with
`‘actions’ in excluding the ’532 Patent’s description of a user inputting
`actions, which are automatically converted into instructions, and which
`instructions are then later automatically executed.” Id. at 3. Petitioner
`contends that, even in the “user generated” scenario, “the actions to be
`performed may be manually specified, but the sequence of instructions that
`results is ‘automatically created,’ consistent with the claim.” Id. at 3–4.
`
`3
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`
`Petitioner further contends that, “[i]n conflating ‘actions’ and
`‘instructions,’ the Board’s claim interpretation misapprehends or overlooks
`the applicable case law that claims are not to be construed in a manner that
`excludes embodiments disclosed in the specification.” Req. 4. Quoting
`Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008), Petitioner
`argues “the Decision violates the maxim that it is abnormal to ‘interpret
`claim terms in a way that excludes embodiments disclosed in the
`specification.’” Id. As a result, Petitioner argues that the claim language
`“automatically create the sequence of instructions to be executed by the
`controlling device such that the sequence of instructions reflects one or more
`interactions by the user” includes “user interactions performed in [an]
`embodiment that is described in connection with user generated macros.”
`Id. at 5. Thus, Petitioner argues, the claim limitation at issue must be
`construed to include both “system generated macros and user generated
`macros,” and cannot properly be construed to exclude user generated
`macros. Id. at 5 (citing Continental Circuits LLC v. Intel Corp., 915 F.3d
`788, 797 (Fed. Cir. 2019)); see also id. at 6 (“the Board should reconsider its
`claim interpretation and find that a ‘macro generated when a user “manually
`program[s] a sequence of actions to be assigned to a single button such that
`the sequence can be repeated by a press of the single button”’ is
`encompassed by claim 10”).
`
`The ’532 patent describes two ways macros may be generated: a
`macro generated “automatically or semi-automatically” and a “user
`generated” macro. Dec. 11–12 (citing Ex. 1001, 17:38–49, 17:53–67,
`23:66–24:10, 24:25–29, 19:67–20:19). As Petitioner argues, our
`construction of “using a program to automatically create the sequence of
`
`4
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`instructions to be executed” excludes the user generated macro. Dec. 11–12.
`However, we disagree that this violates any principles of claim
`interpretation. In Oatey, two embodiments were described in the text of the
`specification and depicted in separate figures; the disputed claim term was
`described as part of each embodiment and depicted in each of the figures.
`Oatey, 514 F.3d at 1273–75. The Federal Circuit found that a proper claim
`construction, in the absence of disclaimer or estoppel, could not exclude one
`of the two embodiments. Id. at 1276–77. Unlike the situation in Oatey,
`however, here two embodiments are not linked explicitly to a claim term
`being construed. The ’532 patent specification describes a remote control
`application supporting both system generated and user generated macros.
`See e.g., Ex. 1001, 23:66–24:2. Petitioner itself maintains that “[t]he
`question is not whether embodiments pertaining to distinct types of
`macros—one ‘system generated’ and one ‘user generated’—are described.”
`Req. 5 (emphasis added).
`Rather, Petitioner’s disagreement with our conclusion whether the
`claim term should exclude the ’532 patent’s described “user generated”
`macros is based on the same argument presented in the Petition based on the
`claim language “instructions.” Compare Pet. 16–17, with Req. 3–4. Our
`Decision discussed this argument. Dec. 10–11. Petitioner disagrees with
`our findings and conclusions, but does not show what in its argument or the
`precedent we have misapprehended or overlooked.
`
`B. Obviousness over Humpleman and Wugoski
`In addressing Petitioner’s first ground of alleged obviousness over
`Humpleman and Walkenbach, we determined that “a macro generated when
`a user ‘manually program[s] a sequence of actions to be assigned to a single
`
`5
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`button such that that sequence can be repeated by a press of the single
`button’ is not encompassed by the proper construction of” using a program
`to automatically create the sequence of instructions to be executed . . . , and
`thus, “Humpleman’s teachings regarding a user manually programming a
`sequence of actions which is repeated when the macro is selected . . . is
`excluded by our construction.” Dec. 19–20. We noted that in considering
`the combination of Humpleman and Walkenbach, “Petitioner relies upon
`Humpleman’s teachings regarding a user manually programming a sequence
`of actions which is repeated when the macro is selected.” Id. at 19.
`In addressing Petitioner’s second ground of alleged obviousness over
`Wugoski, we determined that “Wugoski’s teachings regarding a user
`manually programming a sequence of actions that is repeated when the
`macro is selected [are] excluded by our construction from teaching or
`suggesting [the] limitation” of using a program to automatically create the
`sequence of instructions to be executed . . . . Id. at 21.
`Petitioner argues our:
`Decision arbitrarily “excludes” teachings of Humpleman and
`Wugoski,
`individually, without addressing
`(and
`thereby
`overlooking) the combined teachings of Humpleman and
`Walkenbach (Ground 1), wherein Walkenbach explicitly
`describes a program automatically creating code based on user
`interactions with a graphical user interface (Petition, 29–30) or
`of Wugoski (Ground 2)[,] in view of Wugoski’s alternative
`embodiment teaching, wherein a sequence of commands that a
`user enters a threshold number of times causes the system to
`automatically create a sequence of instructions reflective of the
`commands (Petition, 38–39).
`Req. 7–8. Thus, according to Petitioner, our “‘exclusion’ of references, as
`facilitated by an errant claim construction, violates [] black-letter
`law.” Id. at 8.
`
`6
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`
`Petitioner relied on Humpleman as teaching the “macro generation
`process.” Pet. 26. Petitioner argued “Walkenbach describes Microsoft
`Excel’s ‘macro recorder’ which ‘translates your actions into VBA code.’”
`Id. (citing Ex. 1004, p. 761). We specifically noted that we considered the
`combination of Humpleman and Walkenbach, but in so considering, found
`the portion of Humpleman relied upon by Petitioner for the macro
`generation process did not comport with our construction of using a
`program to automatically create the sequence of instructions to be executed
`in claim 10. Dec. 19–20.
`Similarly, Petitioner argues that “Wugoski describes ‘an alternate
`embodiment of the present invention where a sequence of commands
`inputted into system 100/200 is automatically detected by system 100/200,”
`and “in one example of Wugoski, once a user enters a sequence of
`commands a threshold number of times, the system automatically create[s]
`a macro, or sequence of instructions, reflective of the ‘commands inputted
`into system 100/200.’” Pet. 38–39 (citing Ex. 1006, 8:51–64).
`But, as we noted in our Decision, this teaches or suggests at most a
`user generated macro, because it represents manually programming a
`sequence of actions. Dec. 21. This is because a “sequence of commands” is
`“detected,” much like recording a macro based on a user’s actions, rather
`than basing the program on non-sequential user actions that are
`encompassed by the claim.
`Petitioner has thus not demonstrated that our analysis of grounds 1 or
`2 improperly “excluded” any references, because instead the argument is
`directed to teachings we found are not encompassed within the scope of
`claim 10.
`
`7
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`
`C. Obviousness over Harris
`In our Decision, we agreed “with the District Court’s determination
`that the step of ‘causing the automatically created sequence of instructions to
`be executed …’ ([10.3]) must occur after the creation in the ‘using a
`program to automatically create the sequence of instructions . . .’ limitation
`([10.2]),” and as a result construed “selection of a user input element” to
`mean “selection of a user input element separate from the one or more user
`interactions involved in creating the sequence of instructions.” Dec. 14
`(emphasis added). On this basis, we determined that:
`in Harris, the teaching of the selection of the user input element
`of the controlling device that causes the automatically created
`sequence of instructions to be executed is not a “selection of a
`user input element separate from the one or more user
`interactions involved in creating the sequence of instructions,” as
`required by our construction.
`Id. at 24.
`Petitioner contends, however, that “the Decision misapprehends the
`meaning of the District Court’s claim construction and imports an additional
`user interaction that has no support in the claim language or construction.”
`Req. 9. Specifically, Petitioner argues “the Board erroneously created a
`third user interaction requirement, namely, a user interaction that causes the
`creation of the sequence of instructions.” Id. at 10 (citing Dec. 24).
`Petitioner also argues “the Board further erred by requiring that this third
`unclaimed user interaction must be separate from the user interaction that
`causes execution of the sequence of instructions.” Id.
`Petitioner is mistaken.
`The claim calls for “interactions by the user” which are reflected in
`the “sequence of instructions” created by the program. This sequence is
`
`8
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`caused to be executed by “a selection of a user input element of the
`controlling device.” The “selection” must follow the establishment of the
`sequence of instructions created by the program. See Dec. 13–14.
`In our Decision, we agreed with Patent Owner that “in Harris the
`selection of a user interface element to activate the task both causes the
`creation of the sequence of instructions of limitation [10.2] and the
`execution of the automatically created sequence of instructions of limitation
`[10.3].” Id. at 24. This is because Harris discloses that the sequence taken is
`as follows: “When the user selects a task (e.g. watch television), the
`electronic system automatically determines the actions required to achieve
`the desired task based upon the current state of the external electronic
`devices.” Ex. 1008, 3:19–22; see also id. at 10:28–11:1, id. at 18–20. Thus
`the “sequence of operations” to be executed is not “created” prior to the user
`selecting “watch television,” because after “watch television” is selected, the
`system first determines the state of devices. Id. at 18:24–26 (“After
`selecting the desired WATCH TELEVISION task, the electronic system 100
`immediately reads the Current State Data and compares the same to the
`‘Desired State Data.’”). Then the system creates, and executes, the sequence
`of operations to take:
`After comparing the Current State Data to the Desired State Data,
`the electronic system 100 determines that the room lighting
`needs to be reduced by turning off lights and closing shades
`along with switching the audio input to the television. The
`electronic system 100 further determines that the television needs
`to be turned on and the CD player turned off.
`Id. at 19:8–12. In this sequence, the “selection” that causes execution of the
`sequence of operations does not happen separately from the action that is the
`
`9
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`“interaction by the user” that leads to the creation of the sequence of
`instructions to be executed.
`We thus did not misapprehend the District Court’s construction, or
`import additional limitations into the claim that we then did not find
`disclosed.
`
`
`IV. CONCLUSION
`
`Having considered Petitioner’s arguments and the evidence of record
`regarding the claimed sequence of instructions, Petitioner has failed to show
`that we misapprehended or overlooked arguments or evidence in our
`Decision Denying Institution. Petitioner, therefore, has not demonstrated
`that we abused our discretion in denying institution.
`
`V. ORDER
`
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`10
`
`
`
`IPR2019-01608
`Patent 7,895,532 B2
`
`FOR PETITIONER:
`
`David W. O’Brien
`Raghav Bajaj
`Philip W. Woo
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`raghav.bajaj.ipr@haynesboone.com
`philip.woo.ipr@haynesboone.com
`
`
`FOR PATENT OWNER:
`
`
`Benjamin S. Pleune
`Ryan W. Koppelman
`Thomas W. Davison
`James H. Abe
`Caleb J. Bean
`Derek S. Neilson
`Nicholas T. Tsui
`ALSTON & BIRD LLP
`ben.pleune@alston.com
`ryan.koppelman@alston.com
`tom.davison@alston.com
`james.abe@alston.com
`caleb.bean@alston.com
`derek.neilson@alston.com
`nick.tsui@alston.com
`
`11
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
