Takeaway: Whether a prior art reference was previously taken into account by the Patent Office may be a relevant consideration for the Board in an institution decision under 35 U.S.C. § 325(d), but may not be a relevant consideration when determining whether a petitioner has established unpatentability by a preponderance of the evidence.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 27, 28, 33, 35, 45, and 49 of the ’468 patent are unpatentable as anticipated by Cohen. The ’468 patent relates to a system and method for monitoring remote control transmissions.”

Turning to claim construction under the broadest reasonable interpretation in light of the specification, the Board provided an express construction for the terms “update” and “state.” With respect to the term “update,” the Board previously construed the term to mean “bring up to date,” disagreeing with Patent Owner’s proposal to define the term to mean “rewrite.” The parties did not challenge the Board’s preliminary construction, which the Board maintained. As to the term “state,” the parties arguments related to whether the term “encompasses channel selection,” as described in Cohen. In agreeing with Petitioner, the Board noted that “[b]ased on the claims and written description of the ’468 patent, a state of an appliance is a parameter or set of parameters indicative of transmissions of remote control commands to the appliance.” Thus, the Board found that the “broadest reasonable construction of ‘state’ encompasses channel selection.”

The Board then addressed alleged anticipation of the challenged claims by Cohen.

Patent Owner first argued that the Patent Office’s “prior determination that the claims of the ’468 patent are patentable over Cohen” should not be disturbed. However, the Board noted that although Cohen is discussed in the Background section of the ’468 patent, Cohen does not appear on the face of the patent in the list of references cited. “Nor does the prosecution history indicate Cohen was cited by the applicant in an Information Disclosure Statement or expressly considered by the Examiner.” Thus, the Board was not persuaded that the Office previously considered Cohen during prosecution. Moreover, the Board noted, “although in determining whether to institute an inter partes review we may take into account whether a prior art reference was presented previously to the Office and have discretion to deny a petition on that basis, see 35 U.S.C. § 325(d), Patent Owner offers no basis for finding Petitioner failed to establish unpatentability by a preponderance of the evidence simply because the prior art was previously before the Office.”

As to the substantive analysis, the Board found Patent Owner’s arguments to be unpersuasive. In particular, Patent Owner argued that Cohen does not disclose an “updating” limitation as Petitioner alleged because the analyzing and interpreting occurred in some other “outside world” central host computer. However, Patent Owner’s counsel acknowledged during oral hearing that “the claim language does not require analyzing and interpreting data—it merely requires updating data to represent the current state of an appliance.” The remaining arguments raised by Patent Owner were also found unpersuasive as either being based on claim construction positions that were not adopted or being inconsistent with the disclosure of Cohen. Thus, the Board found the challenged claims unpatentable.

Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2014-01084
Paper 26: Final Written Decision
Dated: December 18, 2015
Patent: 7,126,468 B2
Before: Howard B. Blankenship, Salley C. Medley, and Lynne E. Pettigrew
Written by: Pettigrew
Related Proceedings: Universal Electronics, Inc. v. Universal Remote Control, Inc., No. SACV 13-00984-AG-JPR (C.D. Cal.)