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Universal Remote Control, Inc. v. Universal Electronics, Inc., Final Written Decision

Takeaway: Antedating prior art references based on an earlier reduction to practice requires a showing that the item reduced to practice is actually suitable for its intended purpose.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-6 of the ’067 patent are unpatentable. The Board also dismissed Patent Owner’s Motion to Exclude.  The ’067 patent relates to a universal remote control including “a keyboard having pushbuttons, including a macro pushbutton, and a library of codes and data for use in transmitting operating commands to different home appliances of different manufacturers.”  The macro pushbutton could be programmed to perform a function that would otherwise require the actuation of several buttons.

That Board had instituted the proceeding on three grounds of obviousness. Turning to claim construction, the Board noted that the ‘067 patent is expired, and thus, the standard of claim construction is similar to that of a district court.  The claims are to be construed with a “heavy presumption” that terms carry their ordinary and customary meanings.

The Board first provided a construction relating to the term “directly identify” consistent with the district court’s construction, and as proposed by Patent Owner. In particular, the Board determined, quoting the district court, “the limitation means that: ‘[p]ushbuttons are pressed to enter codes that directly identify each particular home appliance to which the universal remote control is to be matched.’”

The Board next construed the term “library of codes and data,” mostly agreeing with the construction provided by Patent Owner. In addition to Patent Owner’s proposed definition, the phrase was at issue in an ex partereexamination of the ‘067 patent after the patent had expired.  In that proceeding, an expanded Board panel had determined that the term “codes” in the phrase “referred to transmission schemes for relaying ‘data’ to a controlled apparatus.”  The Board construed the term “to refer to a table programmed into the remote control, the table comprising a variety of command codes corresponding to particular appliances of different manufacturers . . . with the understanding that ‘command codes’ may include transmission schemes for relaying data.”

The Board then addressed Patent Owner’s attempt to antedate several references by establishing an earlier date of invention. In support of its argument, Patent Owner submitted a declaration of an inventor along with supporting exhibits.  The Board noted that Rule 131 governs antedating a reference during prosecution and that in an inter partes review, the procedure is similar to establishing certain facts to prove an earlier date of invention in response to a challenge of validity.  In particular, Patent Owner must show it was first to reduce the invention to practice or show that it was first to conceive the invention and exercised reasonable diligence in later reducing to practice.  Corroboration is also required.

The Board noted that Patent Owner had not alleged that the inventors first conceived and exercised reasonable diligence in reducing to practice. Therefore, antedating the references turned on whether Patent Owner demonstrated an earlier reduction to practice.

The Board stated that Patent Owner’s declaration and supporting exhibits had established that prototypes had been constructed before the relevant dates of the references in question. However, the Patent Owner had not shown when the prototypes had been tested and “found to be suitable for their intended purposes.”  In more complex inventions, such as that of the ‘067 patent, mere construction would not demonstrate a reduction to practice; it must be shown that what was constructed worked for its intended purpose.  Therefore, Patent Owner had not established an earlier date of invention, and all the cited references remained prior art.

The Board then turned to the grounds of unpatentability. With respect to the alleged obviousness of claims 1, 3, 4, and 6 over Rumbolt and Magnavox, the Board found the claims were unpatentable and was not persuaded by Patent Owner’s arguments.  In particular, the Board found Patent Owner’s arguments and expert testimony did not comport with the disclosures of the prior art or the evidence of record.  In addition, the Board responded to several of Patent Owner’s declarant’s arguments, finding them to be “unfounded testimony . . . entitled to little or no weight.”  In particular, many of the declarant’s arguments were based on premises that were not supported by the facts, to which the Board responded, “Yes, and if the court had a brother, he might like buttermilk.”

With respect to the ground of obviousness of claims 2 and 5 over Rumbolt, Magnavox, and Evans, the Board found Patent Owner’s arguments unpersuasive. In particular, according to the Board, Patent Owner’s arguments relied upon limitations that were not recited in the challenged claims or were based on positions not supported by the specification of the ‘067 patent.

Turning to the ground of obviousness of claims 1-6 over Wozniak and CORE, the Board again found Patent Owner’s arguments unpersuasive. Patent Owner’s expert attempted to distinguish the claims from the prior art without citing “to any disclosure in CORE, or elsewhere in the record, in support of the allegations.”  In addition, responding to Patent Owner’s argument based on the term “directly identify,” the Board noted that the reference CORE still disclosed the claim limitation as argued by Patent Owner.

Finally, the Board addressed Patent Owner’s Motion to Exclude the redirect examination of Petitioner’s expert. Because the Board did not rely upon that testimony or any arguments regarding the testimony, the Motion was dismissed as moot.

Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2013-00127 Paper 32: Final Written Decision
Dated: June 30, 2014
Patent 6,587,067 C1
Before: Howard B. Blankenship, Sally C. Medley, and William V. Saindon
Written by: Blankenship
Related Proceedings: Universal Electronics Inc. v. Universal Remote Control, Inc., No. SACV 12-00329 AG (JPRx) (C.D. Cal.); Ex parte Universal Electronics, Appeal No. 2009-
011530 (BPAI 2010)

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About this Author

John G. Smith, Intellectual Property Attorney, Drinker Biddle, Law Firm
Partner

John G. Smith is partner in the firm's Intellectual Property Practice Group.

John counsels clients on intellectual property issues, focusing on patent matters in the electrical, computer, telecommunications, optics, semiconductor, electro-mechanical and mechanical arts.  He oversees the patent programs of a broad spectrum of domestic and international clients, providing assistance in the areas of opinion drafting, negotiations, licensing, product redesign, due diligence, patent portfolio development and management and litigation.  His litigation experience encompasses...

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