Case: 22-1782 Document: 51 Page: 1 Filed: 01/12/2024
NOTE: This disposition is nonprecedential.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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2022-1782
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/047,072.
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Decided: January 12, 2024
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JAMES J. LUKAS, JR., Greenberg Traurig, P.A., Chicago,
IL, argued for appellant. Also represented by BENJAMIN
GILFORD, GARY R. JAROSIK; ERIK BOKAR, Greenberg Trau-
rig, LLP, Orlando, FL.
MAI-TRANG DUC DANG, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Katherine K. Vidal. Also represented by
AMY J. NELSON, BRIAN RACILLA, FARHEENA YASMEEN
RASHEED.
______________________
Before REYNA, HUGHES, and STARK, Circuit Judges.
REYNA, Circuit Judge.
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2 IN RE: UNIVERSAL ELECTRONICS, INC.
Universal Electronics, Inc. appeals a final written de-
cision of the United States Patent and Trademark Office
Patent Trial and Appeal Board, which found two claims of
U.S. Patent Application No. 14/047,072 unpatentable as
obvious. We affirm.
BACKGROUND
A. U.S. Patent Application No. 14/047,072
Universal Electronics, Inc. (“UEI”) is the assignee of
U.S. Patent Application No. 14/047,072 (“’072 applica-
tion”), titled “User Interface for a Remote Control Applica-
tion.” J.A. 144. The application describes an improved
remote control user interface for controlling home appli-
ances and entertainment devices, such as televisions. J.A.
28 (2:12–17), 70 (44:20–23). The disclosed user interface
can display a list of icons representing a user’s favorite
channels. See J.A. 124 (Fig. 17(a)). A user can tap an icon
(such as “ESPN”) to select a channel. J.A. 65 (39:1–5).
The remote control may support electronic program
guide (EPG) functionality, which provides information
such as channel listings. J.A. 78 (52:3–14). Using EPG
data, the application describes automatically updating
channel numbers associated with icons representing the
user’s favorite channels. J.A. 96–97 (70:18–71:8). The re-
mote control may “compare the most recently downloaded
EPG against a previously downloaded EPG to determine if
any channel assignments have changed.” J.A. 96 (70:20–
23). If there is a change, the remote control can “update
the favorites channel list to reflect the new channel num-
ber assigned to a favorite.” J.A. 97 (71:2–3). For instance,
if the channel number for “ESPN” changes from 29 to 45,
the remote control updates the mapping for “ESPN” from
channel 29 to channel 45. J.A. 97 (71:3–8). When the user
selects the “ESPN” icon, the correct channel is selected and
displayed. Id.
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IN RE: UNIVERSAL ELECTRONICS, INC. 3
Claims 11 and 12 are at issue. J.A. 24–25. Claim 11 is
representative and recites,
11. A non-transitory, computer readable media
having instructions for displaying information to a
user of a hand-held device, the instructions, when
executed by a processing device of the handheld de-
vice, causing the hand-held device to perform steps
comprising:
displaying to the user a plurality of iconic represen-
tations of sources of programming each having
mapped thereto a first channel number usable by
the hand-held device to transmit a channel tuning
command to a home appliance to [sic] in response
to a selection of a [sic] one of the plurality of iconic
representations;
receiving by the hand-held device an electronic pro-
gram guide having assignments between channel
numbers and sources of programming;
determining if the electronic program guide in-
cludes an assignment of a second channel number
to a source of programming represented by at least
one of the plurality of iconic representations; and
in response to determining that the electronic pro-
gram guide includes the assignment of the second
channel number to the source of programming rep-
resented by at least one of the plurality of iconic
representations, using the electronic program
guide to automatically change the mapping be-
tween the channel numbers and the plurality of
iconic representations such that the mapping of the
channel numbers to the plurality of iconic repre-
sentations corresponds to assignments of channel
numbers to sources of programs within the elec-
tronic program guide.
J.A. 24 (emphasis added to highlight disputed limitations).
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4 IN RE: UNIVERSAL ELECTRONICS, INC.
B. Prior Art References
The Patent Trial and Appeal Board (“Board”) affirmed
rejection of claims 11 and 12 based on prior art references
Baker (U.S. Patent No. 6,597,374), Darbee (U.S. Patent No.
6,130,726), and Pietraszak (U.S. Patent No. 6,990,677).
Baker, the primary reference, discloses a universal re-
mote control with a display. Baker at Fig. 1. Baker’s re-
mote control can display a numeric keypad for channel
selection. Id. at 5:50–52. Baker also discloses program-
ming a “Favorites” list, which allows the user to “create and
edit a list of channels that the user wants to access repeat-
edly.” Id. at 7:15–17.
Darbee discloses a remote control that displays pro-
gram guides with icons mapped to channel numbers, and it
allows the user to modify the channel mapping. Darbee at
Figs. 13–15, 5:54–57, 9:33–35. Darbee further discloses pe-
riodically receiving EPG data and updating program
guides stored in the remote control. Id. at 8:20–23. Accord-
ing to Darbee, the program guide data can be transmitted
in “blocks” or “one-slot at a time.” Id. at 9:14–16, 17:3–6.
Pietraszak discloses managing EPG data from multiple
sources and that the EPG data may include channel infor-
mation such as channel number. Pietraszak at 2:33–36,
8:65–66. Pietraszak explains that the EPG data received
from different sources may differ. Id. at 2:50–54, 8:38–39.
According to Pietraszak, the locally stored EPG data may
also differ from EPG data received from various sources.
Id. at 6:12–15. Pietraszak describes various schemes to re-
solve conflicts among the EPG data sets. Id. at 8:39–54.
For example, EPG data sources may be assigned different
priorities, or the “last EPG data” may take precedence. Id.
at 8:42–48.
C. Obviousness Rejection
During prosecution, the Examiner rejected claims 11
and 12 under 35 U.S.C. § 103(a) as obvious over Baker,
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IN RE: UNIVERSAL ELECTRONICS, INC. 5
Darbee, and Pietraszak. J.A. 1641. In its appeal brief to
the Board, UEI argued that the references do not disclose
the “determining” and “in response to determining” limita-
tions. J.A. 1663–64. UEI also stated that “nothing with
Pietraszak” suggests that Baker and Darbee can be modi-
fied to “arrive at the exact invention claimed.” J.A. 1665.
The Examiner’s answer to UEI’s appeal brief clarified
the basis for the rejection. See J.A. 1706–14. For the “de-
termining” limitation, the Examiner explained that Pie-
traszak “teaches local and source EPG data can vary and
differ,” and it discloses determining and resolving conflict
in the EPG data from different sources. J.A. 1711. The
Examiner explained that these teachings of determining
and resolving conflicts are “equivalent to” the “determin-
ing” limitation. Id. For the “in response to determining”
limitation, the Examiner cited Darbee’s teachings of “peri-
odically receiving EPG” updates and that the EPG data in-
cludes channel numbers mapped to channels. J.A. 1707.
Addressing UEI’s argument that Darbee “simply over-
writes old data with new data,” the Examiner reasoned
that Darbee also teaches “selective updating of program
guide channel data, not completely overwriting it.” J.A.
1708.
The Board ultimately affirmed the Examiner’s rejec-
tion, adopted the Examiner’s findings, and added brief dis-
cussion “primarily for emphasis.” J.A. 2, 5. The Board
agreed with the Examiner that Pietraszak and Darbee dis-
close the two disputed limitations. J.A. 5–7. The Board
also noted that UEI belatedly raised in its reply brief a mo-
tivation-to-combine argument as to Baker and Darbee.
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6 IN RE: UNIVERSAL ELECTRONICS, INC.
J.A. 7–8. The Board found such argument untimely and
forfeited. 1 Id.
UEI appealed. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(A).
STANDARDS OF REVIEW
We review the Board’s legal conclusions de novo, and
its fact findings for substantial evidence. In re Baxter Int’l,
Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012). Obviousness is
a question of law based on underlying findings of fact. Id.
The scope and content of the prior art and whether a person
of ordinary skill in the art would have been motivated to
combine teachings in the prior art are questions of fact. In-
tel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1378
(Fed. Cir. 2023). Substantial evidence means “such rele-
vant evidence as a reasonable mind might accept as ade-
quate to support a conclusion.” Id. (citation omitted).
DISCUSSION
On appeal, UEI contends that the cited references do
not disclose the “determining” and “in response to deter-
mining” limitations. Appellant Br. 17. UEI further argues
that “the Board and the Examiner” failed to articulate suf-
ficient reasoning for a motivation to combine the refer-
ences. Id. We address each issue in turn.
A. “Determining”
UEI argues that Pietraszak does not disclose the “de-
termining” limitation. Id. at 23. As discussed below, sub-
stantial evidence supports the Board’s determination that
Pietraszak discloses this limitation.
1 The Board nevertheless considered UEI’s argu-
ment and found it unpersuasive because the Examiner pro-
vided a rational reasoning to combine Baker and Darbee
and UEI failed to address it. J.A. 8.
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IN RE: UNIVERSAL ELECTRONICS, INC. 7
The Board relied on Pietraszak’s disclosures of resolv-
ing conflicts between EPG data from various sources to
teach this limitation. J.A. 5. On appeal, UEI repeats its
argument that Pietraszak replaces EPG data blocks “based
on priority,” without determining “at the channel number
level” whether channel number assignment has changed.
Appellant Br. 23–24. As the Board explained, UEI reads
Pietraszak’s disclosure too narrowly. See J.A. 5–6.
Pietraszak discloses that EPG data includes “channel
number” information and that conflicts may arise between
locally stored and newly received EPG data. See J.A. 5–6;
see also Pietraszak at 8:66–67, 6:12–18, 15:1–4. The cited
disclosures describe resolving conflicts “upon determining”
a conflict exists between EPG data sources. Pietraszak at
15:1–4 (emphasis added). And in addition to resolving con-
flicts based on assigned priorities, Pietraszak describes giv-
ing precedence “to EPG data that is received most
recently,” namely, the new or updated EPG data. J.A. 6.
In view of these disclosures, one skilled in the art would
have read Pietraszak to teach determining if local EPG
data, such as a channel number, is conflicted with newly
received source EPG data. See id. We agree with the Board
that this teaching sufficiently discloses determining
whether a new channel number is assigned to a source of
programming. See J.A. 5–6. We conclude that the Board’s
finding that Pietraszak teaches the “determining” limita-
tion is supported by substantial evidence.
B. “In Response to Determining”
UEI argues that Darbee does not disclose the “in re-
sponse to determining” limitation. UEI does not appear to
dispute that Darbee teaches updating EPG data, which in-
cludes updating channel numbers. See Oral Arg. 7:54–
8:17, 11:23–42. Rather, the thrust of UEI’s argument is
that Darbee cannot teach the claimed “in response to de-
termining” requirement because it does not teach the
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8 IN RE: UNIVERSAL ELECTRONICS, INC.
“determining” limitation. 2 Appellant Br. 26. We disagree
with UEI’s contention.
The Board’s finding that Darbee discloses the “in re-
sponse to determining” limitation is supported by substan-
tial evidence. This limitation requires “automatically
chang[ing] the mapping between the channel numbers and
the plurality of iconic representations.” J.A. 24. As the
Board explained, Darbee discloses periodically receiving
new EPG data, which includes new channel number as-
signments. J.A. 6–7 (citing Darbee 9:14–16, 17:3–12,
18:51–53, and Fig. 12). The cited Darbee disclosures also
describe that new EPG data can be transmitted to the re-
mote control “one time-slot at a time,” and in that manner,
“[o]nly the time-slot just received” is updated. Darbee at
17:3–12. The Board found that, based on these teachings,
one skilled in the art would have understood Darbee to dis-
close “overwriting channel data in response to determining
whether the channel data has changed.” J.A. 7. To the
Board, this disclosure of “selective updating of program
guide channel data” in response to determining channel
data updates “teaches or at least suggests” the “in response
to determining” limitation. Id. We agree and conclude that
the Board’s finding is supported by substantial evidence.
C. Motivation to Combine
UEI asserts that the Board erred in (1) adopting the
Examiner’s reasoning for a motivation to combine Baker
and Darbee, which UEI contends was insufficient; and (2)
2 To the extent UEI argues the Board must base its
obviousness rejection on a single reference disclosing both
disputed limitations, we reject such a proposition. Unlike
anticipation, for obviousness, limitations of a disputed
claim can be “found in a number of prior art references.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006).
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IN RE: UNIVERSAL ELECTRONICS, INC. 9
failing to “make any findings” regarding the Examiner’s
motivation-to-combine analysis for all three references.
Appellant Br. 29–30. We hold that UEI forfeited its moti-
vation-to-combine argument as to any of the three refer-
ences before the Board.
In the Final Office Action, the Examiner reasoned that
one skilled in the art would have been motivated to com-
bine Baker with Darbee “so that users can navigate to the
program channel they want to see” by “selecting a corre-
sponding channel logo.” J.A. 1645. The Examiner further
explained that one skilled in the art would also have been
motivated to combine Baker and Darbee with Pietraszak
so that “the user is presented with the mostly likely accu-
rate [EPG] data.” J.A. 1646.
UEI’s appeal brief to the Board did not challenge the
Examiner’s motivation-to-combine analysis or explain how
UEI believed it to be insufficient. 3 Nor did UEI do so in its
reply brief. The first time UEI addressed the Examiner’s
reasoning was in its briefing on appeal to this court. See
Appellant Br. 28–30; J.A. 8. Under these circumstances,
we hold that UEI failed to properly raise, and thus for-
feited, its motivation-to-combine argument before the
3 In its appeal brief to the Board, UEI generally
stated that Pietraszak would not lead one to modify Baker
and Darbee to arrive at the claimed invention or the “de-
termining” limitation. See J.A. 1665–66. These state-
ments are premised on UEI’s contention as to what the
prior art references (alone or modified) teach. They do not
raise with sufficient specificity, or preserve, an argument
against finding a motivation to combine the references. See
37 C.F.R. § 41.37(c)(iv). As a result, the Examiner was de-
prived of reasonable notice and an opportunity to respond.
The Board, in turn, was deprived of a fulsome record nec-
essary to make an informed judgment. See In re Watts, 354
F.3d 1362, 1368 (Fed. Cir. 2004).
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10 IN RE: UNIVERSAL ELECTRONICS, INC.
Board. See In re Google Tech. Holdings LLC, 980 F.3d 858,
862–63 (Fed. Cir. 2020). Absent exceptional circum-
stances, an argument not properly raised before the Board
will not be considered on appeal. See id.; In re Couvaras,
70 F.4th 1374, 1379 (Fed. Cir. 2023). No exceptional cir-
cumstance exists here to justify a departure from this prin-
ciple, and we therefore decline to entertain UEI’s
motivation-to-combine argument.
CONCLUSION
We have considered UEI’s remaining arguments and
find them unpersuasive. Accordingly, the decision of the
Board is affirmed.
AFFIRMED
COSTS
No costs.