Newman Dissents from Precedential CAFC Ruling Upholding Universal Remote Patent Claims

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday issued a precedential decision holding that the Patent Trial and Appeal Board (PTAB) correctly found Roku, Inc. had failed to prove the challenged claims of Universal Electronics, Inc.’s patent obvious. Judge Stoll authored the majority opinion and Judge Newman dissented, citing both procedural and substantive problems with the majority’s analysis.

The decision relates to Universal Inc.’s U.S. Patent No. 9,716,853, which generally is directed to universal remote controls. Specifically, the patent describes “a universal control engine (UCE) that facilitates communication between a controlling device (i.e., a remote) and intended target appliances.” The patent notes that universal remotes were known at the time of invention, but that “the proliferation of new communication methods raises the potential for ‘confusion, misoperation, or other problems,’… particularly because the preferred communication method for transmitting commands ‘may vary by both appliance and by the function to be performed.” Thus, the ‘853 patent’s improvement is “the ability to reliably use different communication methods that enable a single remote control to provide commands to a variety of target appliances, according to the optimal method of communication for each target appliance and command.”

Roku challenged claims 1, 3, 5, and 7 of the ‘853 patent via an inter partes review (IPR) proceeding, arguing that the claims would have been obvious in view of U.S. Patent Pub. No. 2012/0249890 (“Chardon”) and other prior art references. The case, both before the PTAB and the CAFC, turned on “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 recited in each challenged claim.”

While Roku explained in its petition at length how Chardon describes a process for creating a database of command codes, it did not, said the CAFC, “explain how a list of command codes is a list of communication methods.” The court observed:

“In its petition, Roku thus assumed that, because Chardon’s command codes are formatted for transmission via different communication methods, its list of command codes is necessarily a list of communication methods. But Roku neither articulated this assumption nor explained how the record evidence supported it.”

Roku also did not provide claim constructions, noting that the claim language should receive the plain and ordinary meaning as determined by the ‘853 specification.

The Board ultimately held that Roku failed to prove that a skilled artisan would have understood that command codes and communication methods were the same things.

In its discussion, the CAFC conceded that it could “see both sides of this factual dispute,” but that substantial evidence supported the Board’s approach and holding. “Review of the record as a whole reveals that the factual dispute at hand was highly contested and closely decided,” said the court, but since the PTAB’s holding “flows from the ’853 patent specification itself” and Universal’s expert testimony, the evidence supported the decision. The majority further noted that its role as an appellate court is not to make factual findings or to reweigh evidence and thus, “although this court could well have decided the factual dispute at hand differently than the Board did, it is not the province of this court to do so.”

Judge Newman’s dissent took issue with the court’s reasoning, disagreeing with its decision to decline review of the legal questions of claim construction and obviousness de novo, and instead to review only the Board’s fact-finding. Addressing Newman’s dissent, the majority said that “Roku expressly raises only a factual question on appeal: whether Chardon teaches a particular claim element.” For that reason, the court viewed the issue on appeal “as a Graham factor underlying obviousness—not as a question of the ultimate conclusion of obviousness,” said the CAFC in a footnote.

But Newman said this “misperceives” her dissent:

“I do not ‘assert[] that we should apply de novo review to this [factual] issue.”…I do assert that we should apply de novo review to the issue on appeal, that is, the legal issue of obviousness. ‘It is emphatically the province and duty of the judicial department to say what the law is. Those who apply the rule to particular cases, must of necessity expound and interpret that rule.’ Marbury v. Madison, 5 U.S. 137, 177 (1803). This foundation of appellate review applies whether or not any facts are disputed.”

In Newman’s analysis of the claims at issue, she said that they would have been obvious in view of Chardon, “because the methods described in the claims and the prior art are substantially identical and serve the same purpose and use.”

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Author: NewAfrica