Case: 22-1230 Document: 32 Page: 1 Filed: 05/10/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: UNIVERSAL ELECTRONICS, INC.,
Appellant
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2022-1230
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 15/962,451.
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Decided: May 10, 2023
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JAMES J. LUKAS, JR., Greenberg Traurig, LLP, Chicago,
IL, argued for appellant Universal Electronics, Inc. Also
represented by BENJAMIN GILFORD, GARY R. JAROSIK.
MICHAEL S. FORMAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Katherine K. Vidal. Also represented by
THOMAS W. KRAUSE, MONICA BARNES LATEEF, AMY J.
NELSON, FARHEENA YASMEEN RASHEED.
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Before CHEN, MAYER, and HUGHES, Circuit Judges.
CHEN, Circuit Judge.
Universal Electronics Inc. (UEI) appeals a decision by
the Patent Trial and Appeal Board (Board) that affirmed
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2 IN RE: UNIVERSAL ELECTRONICS, INC.
an Examiner’s rejection of claims 1–12 of U.S. Patent Ap-
plication No. 15/962,451 (’451 application) as unpatentable
under 35 U.S.C. § 103. Ex Parte Pouw, No. 2020-004505,
2021 WL 4745439, at *9 (P.T.A.B. Oct. 8, 2021) (Decision).
Because the Board failed to address UEI’s arguments iden-
tifying a hole in the rejection, we vacate and remand.
BACKGROUND
I
The ’451 application is directed to a “switching device,”
like the audio/video (AV) receiver 902 shown below, that “is
connected to and capable of switching” connections be-
tween multiple “source devices,” like DVD player 904 and
cable set top box 104, and “sink devices,” like TV set 106.
J.A. 48, 51. Each source and sink device has its own dedi-
cated remote controller, 906, 907, and 908. J.A. 48.
J.A. 63. In the present invention, when “one of several [re-
mote] controlling devices 906 through 908, each corre-
sponding to one of devices 104, 106 or 904, is currently in
use,” the remote controller’s transmitted signal is detected
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IN RE: UNIVERSAL ELECTRONICS, INC. 3
and read not only by the corresponding source or sink de-
vice, but also by the switching device, which may include a
universal infrared (IR) receiver capable of identifying and
decoding the command transmission formats of multiple
manufacturers. J.A. 48. Upon determining that the IR sig-
nal is intended for a specific source or sink device, the
switching device establishes the appropriate connection be-
tween the source device and the sink device. J.A. 48, 51.
The ’451 application includes independent claims 1, 5,
and 9. J.A. 23–26. The Board determined that claims 1
and 5 are exemplary, affirmed the Examiner’s rejection of
claim 5, and sustained the rejection of claims 1 and 9 for
the same reasons as claim 5. Decision, 2021 WL 4745439,
at *1, *3–9. Thus, we also focus on claim 5. It recites:
A switching device, comprising:
a plurality of audio/video (AV) ports;
a receiver; and
control logic that is operable to selectively
connect at least one of a plurality of source
devices to a sink device each of which is
connected to a corresponding one of the plu-
rality of AV ports, the control logic being
configured to:
determine that the receiver has re-
ceived an infrared (IR) signal
transmitted by a remote control de-
vice, wherein the IR signal trans-
mitted by the remote control device
comprises a protocol and a com-
mand value that is directly recog-
nizable by a first device among the
plurality of source devices and the
sink device;
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4 IN RE: UNIVERSAL ELECTRONICS, INC.
in response to determining that the
receiver has received the IR signal,
determine that the remote control
device is in use; and
in response to at least determining
that the remote control device is in
use, controlling a connection be-
tween the at least one of the plural-
ity of source devices and the sink
devices as a function of the detected
IR signal.
Id. at *1–2 (emphasis added). Thus, the invention claimed
is a switching device that detects an IR signal sent directly
to a source or sink device, like a DVD player or TV, that
the switching device responds to by controlling a connec-
tion between the source and sink devices. For example, if
a user turns on the DVD player using the remote control
for the DVD player, the switching device also detects the
IR signal from the remote control to the DVD player and
responds by connecting the DVD player to the TV.
II
During prosecution, the Examiner rejected the original
claims of the ’451 application as unpatentable under 35
U.S.C. § 102 over U.S. Patent Pub. No. 2007/0220150
(Garg). J.A. 146–61. Garg discloses a “hub” that connects
“a plurality of source devices . . . to one or more sink de-
vices,” where the user selects a source or sink device
through (1) “manual selection means” like “switches, but-
tons or keys” on the front panel of the hub, or (2) “remote
selection means” like an IR remote controller. Garg ¶¶ 60,
64–66. Although UEI argued that Garg’s hub (i.e., the
switching device) only responds to an IR signal intended for
the hub rather than a signal intended for a source device,
J.A. 136–38, the Examiner found the claims anticipated be-
cause the outcome of Garg’s IR signals was the same—i.e.,
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IN RE: UNIVERSAL ELECTRONICS, INC. 5
connection of a source and sink device, J.A. 148–49. See also
J.A. 180–83; J.A. 186; J.A. 191–92.
UEI responded to this rejection by amending the claims
to add the limitation emphasized in claim 5 above, thus re-
quiring the switching device to receive and respond to an
IR signal directed to a source or sink device. J.A. 209–18.
The Examiner conceded that Garg did not anticipate the
claims as amended but rejected the claims as unpatentable
under 35 U.S.C. § 103 over Garg in view of U.S. Patent
Pub. No. 2013/0187767 (Igoe). J.A. 225–41. Igoe teaches a
wireless home entertainment hub that “facilitates the
transfer of data between the source and sink devices,”
where the user activates or changes source devices
(1) through a universal remote controller or (2) by interact-
ing directly with the source device, like inserting a DVD
into a DVD player. Igoe ¶¶ 23–24, 27, 42, 47. When a given
source device is active, the hub sends a signal to the uni-
versal remote controller to display actuators (e.g., buttons)
that correspond to the active source, and when a user
presses one of those buttons, an IR signal is sent from the
remote controller to the active source device. J.A. 232; see
also J.A. 229, 235. According to the Examiner, a skilled
artisan would have found it obvious to modify Garg’s re-
mote controller to send a signal directly to a source device,
as taught by Igoe, rather than sending a signal to the hub,
as taught by Garg. J.A. 232; see also J.A. 229, 235. The
Examiner, however, did not suggest any corresponding
changes to Garg’s hub in view of Igoe or explain how Garg’s
hub would respond, if at all, to an IR signal sent directly to
a sink or source device.
III
UEI appealed to the Board, disputing the Examiner’s
rejection because (1) the rejection only contemplated mod-
ifying Garg’s remote controller, not Garg’s hub; (2) Garg’s
hub, even if modified by Igoe, is not the claimed switching
device because Igoe does not teach a switching device that
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6 IN RE: UNIVERSAL ELECTRONICS, INC.
detects and responds to a protocol and a command value
that is directly recognizable by a source or sink device; and
(3) the Examiner did not articulate a motivation to combine
Garg and Igoe. J.A. 285–88.
The Examiner’s Answer responded to UEI’s arguments
by adjusting the proposed combination to modify Garg’s
hub according to Igoe, explaining that Igoe teaches a hub
that “is operable to switch between sources and sink de-
vices” and thus “it would have been obvious, based on the
teachings of Igoe, to modify the switching device
(Hub)/method of Garg [] in order to transmit the IR com-
mand from the remote controller directly to any sinks
and/or source devices connected to the Hub[].” J.A. 315
(emphasis added). The Examiner did not explain, however,
how Garg’s now modified hub would respond to IR signals
sent directly to a sink or source device. Regarding motiva-
tion to combine, the Examiner stated, without further ex-
planation, that “obviousness may be established by
combining or modifying the teachings of the prior art to
produce the claimed invention where there is some teach-
ing, suggestion, or motivation to do so found either in the
references themselves or in the knowledge generally avail-
able to one of ordinary skill in the art.” J.A. 316 (citations
omitted).
IV
The Board affirmed the Examiner’s rejection. Decision,
2021 WL 4745439, at *1, *9. After dismissing UEI’s argu-
ment as “not directed to the Examiner’s specific findings,”
the Board explained that the Examiner found, and UEI did
not persuasively dispute, that Garg teaches certain limita-
tions of claim 5, and thus “Igoe does not need to teach those
limitations again.” Id. at *4. The Board then recited the
limitations of claim 5, but without explanation, omitted the
limitation that UEI added by amendment. Id.
The Board also determined that UEI’s motivation to
combine argument “is moot in light of the Examiner’s
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refined rationale” in the Answer. Id. at *6. The Board ex-
plained that the Examiner “provided articulated reasoning
with a rational underpinning,” including that a skilled ar-
tisan would have combined Garg and Igoe “to facilitate
communications with the remote controller” and that the
combination “would have predictably used prior art ele-
ments according to their established functions—an obvious
improvement.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007)).
UEI timely appealed. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
The Board’s decision here is inadequate. To start, the
Board never addressed UEI’s argument that neither Garg
nor Igoe, alone or in combination, teaches a switching de-
vice that detects and responds to an IR signal directed to a
device other than the switching device. The Board dodged
this argument by stating what was uncontested—i.e., that
Garg teaches, and thus Igoe does not need to teach, the un-
disputed limitations of claim 5. Decision, 2021 WL
4745439, at *4. In doing so, the Board omitted from its rec-
itation of claim 5 the limitation that was added in response
to the Examiner’s rejection over Garg—i.e., “wherein the
IR signal transmitted by the remote control device com-
prises a protocol and a command value that is directly rec-
ognizable by” a first device. Compare id., with J.A. 214.
Although “we will uphold a decision of less than ideal clar-
ity if the agency’s path may reasonably be discerned,” the
Board’s “explanation must suffice for us to see that the
agency has done its job and must be capable of being rea-
sonably discerned.” In re NuVasive, 842 F.3d 1376, 1383
(Fed. Cir. 2016) (cleaned up) (citations omitted). We cannot
conclude that the Board has “done its job” when it avoids
an applicant’s primary argument by omitting the disputed
limitation from its obviousness analysis. See Gechter v. Da-
vidson, 116 F.3d 1454, 1459–60 (Fed. Cir. 1997) (holding
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8 IN RE: UNIVERSAL ELECTRONICS, INC.
that “the Board’s opinion lacks the level of specificity nec-
essary for [] review” because the Board’s decision addressed
only one of several limitations in the claim).
The Board’s failure is particularly problematic because
it is unclear if the Examiner’s rejection relies on modifying
Garg’s remote controller, Garg’s hub, or both. See Decision,
2021 WL 4745439, at *3 (adopting Examiner’s findings and
conclusions). Even assuming the Examiner meant both,
the Examiner’s rejection does not fully address the limita-
tion at issue. The Examiner’s rejection only explained that
Igoe’s hub sends a signal to the remote controller, and the
remote controller sends a signal to the source device. Igoe
does not teach that the hub responds to the IR signal sent
to the source device by changing a connection between a
source and sink device. Thus, even if Garg’s hub was mod-
ified according to Igoe to transmit a signal from the remote
controller to a source or sink device, the rejection still fails
to teach the limitation at issue—i.e., that an IR signal con-
figured to be read by a specific source or sink device is also
detected by the switching device, which then automatically
takes action to control the connections between the source
and sink devices, as a function of that detected signal.
The Board’s motivation to combine analysis also is con-
clusory and insufficient. See NuVasive, 842 F.3d at 1382
(“Although identifying a motivation to combine need not
become a rigid and mandatory formula, KSR, 550 U.S. at
419, 127 S.Ct. 1727, the PTAB must articulate a reason
why a [skilled artisan] would combine the prior art refer-
ences.”). The Board relied on the Examiner’s Answer, but
the Answer merely parroted case law without any attempt
to apply that case law to the proposed combination in a
manner that matched all the claim limitations.
J.A. 315–16; Decision, 2021 WL 4745439, at *6. These con-
clusory statements unsupported by a reasoned explanation
are insufficient. See NuVasive, 842 F.3d at 1383.
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The Board also mechanically recited that a skilled ar-
tisan would “be able to fit the teachings of multiple patents
together like pieces of a puzzle” and that the proposed com-
bination “would have predictably used prior art elements
according to their established functions.” Decision, 2021
WL 4745439, at *6 (quoting KSR, 550 U.S. at 420–21). But
the Board failed to cite any part of the record or the prior
art to explain how or why those statements apply here.
Finally, the Board asserted that a skilled artisan
“would have modified Garg’s system to incorporate Igoe’s
feature in order to facilitate communications with the re-
mote controller.” Id. Setting aside the fact that Garg alone
teaches that its hub communicates with its remote control-
ler, this fails to explain why a skilled artisan would modify
Garg such that Garg’s hub detects and responds to an IR
signal directed to another device.
The Director’s brief acknowledges that the rejection
may not constitute “a model of clarity” but argues that the
rejection “was more than sufficient” because the “claimed
invention is straightforward” and the “prior art references
are easily understandable.” Appellee’s Br. 20–21. Alt-
hough a “brief explanation may do all that is needed if, for
example, the technology is simple and familiar and the
prior art is clear in its language and easily understood,”
Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d
987, 994 (Fed. Cir. 2017), neither the Board nor the Exam-
iner provided even a brief explanation as to how Garg
would be modified by Igoe to render obvious the ’451 appli-
cation’s claims.
The Director also advances multiple arguments on ap-
peal based on theories that were not made by the Examiner
or the Board. The Director, for example, argues that the
’451 application’s specification admits that universal IR re-
ceivers were known in the art, that it would have been “well
within the capabilities of a skilled artisan” to modify Garg’s
switching device IR circuitry to add a universal IR receiver
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10 IN RE: UNIVERSAL ELECTRONICS, INC.
that responds to IR signals sent directly to a source device,
and that a skilled artisan would be motivated to combine
Garg and Igoe such that the switching device automatically
responds to an IR signal sent to another device to “sim-
plify[] the process of changing sources.” Appellee’s
Br. 15–17, 19. Even if we found these arguments persua-
sive, we “have no warrant to accept appellate counsel’s post
hoc rationalizations for agency action”; “our review of a pa-
tentability determination is confined to the grounds on
which the Board actually relied.” Power Integrations, Inc.
v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (internal quo-
tation marks and citations omitted). Instead, the required
course is for the agency in the first instance to consider
these possible bases for rejecting the claim.
CONCLUSION
The Board’s reasoning does not meet the requirements
for a sustainable obviousness rejection, and we vacate the
Board’s determination that claims 1–12 of the ’451 applica-
tion are unpatentable under 35 U.S.C. § 103. We remand
for the agency to reconsider the merits of the claims in view
of the Director’s new arguments.
VACATED AND REMANDED
COSTS
No costs.