IP Law Daily, PATENT—Fed. Cir.: PTAB rejection of application for switching device reversed for insufficient analysis, (May 10, 2023)

By Kevin M. Finson, J.D.

The Board did not consider the arguments raised by the applicant and the USPTO’s post hoc arguments were not supported by the record below.

A Patent Trial and Appeal Board decision upholding an examiner’s rejection of an application for a “switching device” for use with multiple “source devices” on obviousness grounds was reversed by the U.S. Court of Appeals for the Federal Circuit. The PTAB did not conduct enough of an analysis to explain its conclusions. For example, the Board did not discuss limitations added to claims during prosecution and failed to consider arguments raised by a patent applicant, including substantial arguments about motivation to combine. The case was remanded and remanded for further proceedings (In re: Universal Electronics, Inc., May 10, 2023, Chen, R.).

Universal Electronics, Inc. (UEI) was the assignee of U.S. Patent Application No. 15/962,451 (the ’451 application) which claimed a “switching device” for use with multiple “source devices” such as DVD players and cable set top boxes, and “sink devices” such as television sets. The switching device would receive signals from remote control devices associated with one of the source or sink devices and would establish connections between the appropriate source and sink devices. The Examining Attorney refused registration on the ground of obviousness in light of the combination of two prior art references, one for a hub that connected source and sink devices but used only a remote control for the hub and not for the component devices, and one for a hub that used a hub to detect which source and sink devices were active and then allowed the universal remote to send signals directly to the active devices. UEI appealed to the Patent Trial and Appeal Board, and the Board affirmed the rejection. UEI appealed to the Federal Circuit.

Obviousness. The court began by stating that the Board’s decision was inadequate because it never addressed UEI’s argument that neither of the prior art references taught a switching device which detected and responded to a signal directed to one of the source or sink devices. The Board had completely omitted limitations added to claims during prosecution which addressed this issue. The Federal Circuit said that it could not affirm the Board’s decision because it could not determine whether the Board and the Examining Attorney had relied on modification of the prior art’s remote controllers, the hubs, or both. Additionally, the Board did not articulate a reason why a skilled artisan would combine the prior art references, but merely recited the case law governing motivation to combine without application to the facts.

The Federal Circuit reversed and remanded the case for further proceedings and more complete analysis by the Board.

The Case is No. 22-1230.

Attorneys: James J. Lukas, Jr. (Greenberg Traurig, LLP) for Universal Electronics, Inc. Michael S. Forman, U.S. Patent and Trademark Office, for Katherine K. Vidal.

Companies: Universal Electronics, Inc.

Cases: Patent FedCirNews USPTO