IP Law Daily, PATENT—Fed. Cir.: PTAB properly found that a Universal Electronics’ patent for universal remotes was not obvious, (Apr 3, 2023)

By Robert Margolis, J.D.

The underlying issue the Board decided was a factual question subject to “substantial evidence” standard of review.

A divided panel of the U.S. Court of Appeals for the Federal Circuit has affirmed a Patent Trial and Appeal Board inter partes review final decision finding that petitioner Roku failed to establish that the challenged claims of Universal Electronics’ patent directed to universal remote command codes were not obvious over prior art. The court, over a dissenting opinion by Judge Newman, held that the underlying issue of whether the claims in prior art rendered claims in the patent-in-issue obvious was a factual question—specifically, whether prior art’s use of “command codes” was different from the patent’s “communication methods” limitation—subject to a review for whether “substantial evidence” supported it. Judge Newman argued that the Board’s ultimate obviousness decision in this case involved a legal question subject to de novo review (Roku, Inc. v. Universal Electronics, Inc., March 31, 2023, Stoll, K.).

’853 patent. Universal owns U.S. Patent No. 9,716,853 (the “’853 patent”), which relates to universal remotes, in particular to a universal control engine (“UCE”) facilitating communication between a controlling device (such as a remote), and the intended target appliances (such as a TV, sound system, etc.). While acknowledging that universal remotes preexisted and were known prior to the time of Universal’s invention, the specification of the ’853 patent purports to improve the prior technology by reliably using different communications methods that allow a single remote to provide commands to a variety of target appliances, using what is the optimal method of communication for each target appliance. The preferred method of communication for transmitting commands may differ both by appliance and by the functions to be performed, with some appliances/functions communicating by Consumer Electronic Control (“CEC”) commands, and others by infrared (“IR”) commands.

The ’853 patent describes how its UCE “can receive commands from a controlling device” and “apply the optimum methodology to propagate the command function(s) to each intended target appliance,” according to a “preferred command matrix.” A representative claim recites that the UCE includes a memory device that has stored instructions permitting it to create “a listing comprised of at least a first communication method and a second communication method different than the first communication method” for use in controlling at least two different functional operations.

Roku challenge. Roku sought inter partes review of claims 1, 3, 5, and 7 of the ’853 patent, asserting those claims would have been obvious in view of U.S. Patent Pub. No. 2012/0249890 (“Chardon”). The question faced by the Board, and also by the Federal Circuit, was whether Chardon discloses “a listing comprised of at least a first communication method and a second communication method different than the first communication method,” as set forth within each of the claims within the ’853 patent that Roku challenged.

Chardon also concerned a remote control system configured to control various target devices, which use target device identification data to generate a linked database that includes sets of command codes (meaning instructions to perform commands). The database includes a set of CEC command codes and a set of IR command codes. When it receives a command to perform a functions (such at increase volume on a TV), it first relays the command to the TV using a CEC code, but if the system does not receive a response from the TV indicating that it received the command, it then sends an IR command code to the TV. It can also determine that a target device does not receive CEC command codes and thus send IR codes instead.

Roku’s inter partes petition argued that Chardon creates a database of IR and CEC “command codes” such that a skilled artisan would find that Chardon meets the claimed limitation in the ’853 patent, of using at least a first and second “communication method” that differ from each other. Of note to the Federal Circuit, in describing the argument Roku made to the Board, is the fact that Roku did not explain how a list of command codes equates with a list of communication methods, or how a list of command codes would make a list of communication methods obvious. It did not state that a list of command codes is inherently a list of communication methods, or explain that a skilled artisan would be motivated to derive a list of communication methods from the command codes in Chardon.

Roku’s only evidence described by the Federal Circuit was the testimony of an expert, who, while asserting that Chardon’s linked database discloses “a listing comprised of at least a first communication method (e.g., CEC command codes) and a second communication method (e.g., IR command codes),” thus seemingly equating command codes and communication methods, also noted that Chardon uses its linked database “to send a CEC command code … using a first communication method,” which seemingly acknowledges that command code and communication method are different things.

Universal countered with its own expert’s testimony. Universal’s expert made clear that a command code (“an instruction to perform a function”) is different from a communication method (“a medium or protocol for transmitting or receiving information”), and that the ‘853 patent clearly distinguishes between the two. Thus, one of ordinary skill in the art would not have understood “command code” to be a “communication method.”

Based on that record, the Board concluded that Roku had not shown by a preponderance of the evidence that the challenged claims would have been obvious over Chardon alone, or in combination with other prior art references. Roku appealed.

Fact question. Noting that Roku did not dispute claim construction before the Board, the Federal Circuit’s majority considered the question at issue before the Board and raised on appeal to be one of fact: “whether Chardon’s list of command codes formatted to be transmitted via different communication methods is, itself, a list of different communication methods as recited in the claims.” The standard of review for the Board’s decision on a question of fact is whether it is supported by substantial evidence. As the ultimate ruling as to non-obviousness rested on that factual decision, the Federal Circuit applied the “substantial evidence” standard of review to the Board’s ultimate ruling, rather than a de novo review to which a legal decision about obviousness would be subject.

Given (1) that the Board could have reasonably credited Universal’s expert over Roku’s, (2) that the ’853 patent itself distinguishes between a list of communication methods and a list of command codes, in different portions of the specifications, and (3) that Roku itself has not disputed that basic concept that a command code is different from a communication method, the Federal Circuit found that the Board’s decision was supported by substantial evidence. While the factual dispute “was highly contested and closely decided,” according to the Federal Circuit, it was supported by substantial evidence. Thus, the appellate court affirmed the Board’s ultimate conclusion that Roku’s obviousness challenge failed.

Dissent. Circuit Judge Pauline Newman disagreed with the majority that the issue it was reviewing was the underlying factual question, under a reasonable evidence standard, rather than the Board’s decision on the legal issue of obviousness, under a de novo standard. As Judge Newman expressed her concern, the majority’s decision contains an “implicit holding” that if the underlying fact findings of the Board are supported by substantial evidence, then the ultimate legal conclusion stemming from those findings on the obviousness question is not reviewed. Judge Newman also would have found that the claims in the ’853 patent would have been obvious in view of Chardon, because in her view Chardon teaches communication methods, and the differences noted by the majority are unclaimed by the ’853 patent.

The Case is No. 22-1058.

Attorneys: William Milliken (Sterne Kessler Goldstein & Fox, PLLC) for Roku, Inc. Michael Anthony Nicodema (Greenberg Traurig LLP) for Universal Electronics, Inc.

Companies: Roku, Inc.; Universal Electronics, Inc.

Cases: Patent FedCirNews USPTO