Case: 22-1757 Document: 34 Page: 1 Filed: 06/14/2023
NOTE: This disposition is nonprecedential.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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2022-1757
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/282,785.
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Decided: June 14, 2023
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JAMES J. LUKAS, JR., Greenberg Traurig, P.A., Chicago,
IL, argued for appellant Universal Electronics, Inc. Also
represented by BENJAMIN GILFORD, GARY R. JAROSIK,
MATTHEW J. LEVINSTEIN.
OMAR FAROOQ AMIN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Katherine K. Vidal. Also represented by
MAI-TRANG DUC DANG, THOMAS W. KRAUSE, ROBERT
MCBRIDE, AMY J. NELSON, FARHEENA YASMEEN RASHEED.
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Before REYNA, TARANTO, and STOLL, Circuit Judges.
TARANTO, Circuit Judge.
Case: 22-1757 Document: 34 Page: 2 Filed: 06/14/2023
2 IN RE: UNIVERSAL ELECTRONICS, INC.
Universal Electronics, Inc. filed U.S. Patent Applica-
tion No. 14/282,785, claiming priority to 2006. After Uni-
versal cancelled a number of claims, the assigned examiner
in the U.S. Patent and Trademark Office rejected all the
remaining claims (claims 1 and 12–16) for obviousness, un-
der
35 U.S.C. § 103 (pre-2011 version), in light of three
prior-art references: Gardner (U.S. Patent Pub. No.
2008/0319852), Hu (U.S. Patent Pub. No. 2013/0304817),
and Drayson (U.S. Patent Pub. No. 2013/0276010). The
Patent Trial and Appeal Board affirmed the examiner’s re-
jections. Universal timely appeals. We have jurisdiction.
28 U.S.C. § 1295(a)(4)(A);
35 U.S.C. § 141(a). We affirm.
The ’785 application describes and claims methods for
displaying advertising content. As relevant to the limited
issues on appeal here, claim 1, which the parties agree is
representative, requires “a device” and a “second app in-
stalled on the device . . . [that] function[s] to display the
advertising content as an overlay” to content being
streamed on a display. J.A. 15.
The key prior-art reference, Hu, describes “[a] method
of operation of a content delivery system” that can perform
a variety of functions, including overlaying an advertise-
ment over content streamed on a display. J.A. 1265; J.A.
1281–82, ¶¶ 163–65. Hu teaches a “first device,” “second
device,” and “third device” that are components of its con-
tent delivery system. Hu also teaches that a part of its con-
tent delivery system is an “overlay module,” which is a part
of Hu’s “content module,” that can function to overlay ad-
vertisements on a display. As the Director explains, and
as Universal does not dispute, the “sole dispute as to
whether the prior art combination teaches the limitations
of claim 1 turns on whether Hu teaches placing overlay
module 722 on third device 108.” Director’s Response Br.
at 30.
The Board, affirming the examiner, found that Hu does
teach placing the overlay module on the third device. J.A.
Case: 22-1757 Document: 34 Page: 3 Filed: 06/14/2023
IN RE: UNIVERSAL ELECTRONICS, INC. 3
5; see J.A. 931; J.A. 1026–28. What Hu teaches is a ques-
tion of fact. See, e.g., Henny Penny Corp. v. Frymaster LLC,
938 F.3d 1324, 1331 (Fed. Cir. 2019). Under the substan-
tial-evidence standard of review, we must affirm the find-
ing of what Hu teaches if that finding is reasonable.
Id. at
1330.
The reading of Hu adopted by the examiner and the
Board is reasonable. As the examiner explained, Hu
teaches that the third device itself can include “a third con-
trol unit,” which can “execute[] a third software” that “pro-
vides the intelligence of the content delivery system 100.”
J.A. 1026 (citing J.A. 1278, ¶ 116). The examiner reasoned
that this intelligence includes overlaying, performed by the
overlay module as part of the intelligence that can be on
the third device. J.A. 1026–27. The Board affirmed those
findings. J.A. 5. This is a reasonable reading of Hu.
We reject Universal’s argument that a separate pas-
sage in Hu suggests otherwise. Although Hu provides that
the content module, which includes the overlay module,
can be implemented “in the first device 102 or the second
device 106,” J.A. 1284, ¶ 199, nowhere does Hu state that
it cannot be installed on the third device, and ¶ 116 of Hu
is reasonably understood to indicate that it can be so in-
stalled. See J.A. 1278, ¶ 116; J.A. 1270 (Fig. 7); see J.A. 5.
Nothing in Hu contradicts the Board’s finding that Hu sug-
gests that the overlay module can be installed on the third
device. The Board’s finding therefore is supported by sub-
stantial evidence. See Bradium Technologies LLC v. Iancu,
923 F.3d 1032, 1049 (Fed. Cir. 2019) (explaining that prior
art “must be considered not only for what it expressly
teaches, but also for what it fairly suggests” (quoting In re
Baird,
16 F.3d 380, 383 (Fed. Cir. 1994))).
Besides disputing the Board’s finding about Hu just
discussed, Universal faults the Board for not identifying a
motivation to combine Hu with Gardner. But the examiner
found such a motivation, reflecting a suggestion made in
Case: 22-1757 Document: 34 Page: 4 Filed: 06/14/2023
4 IN RE: UNIVERSAL ELECTRONICS, INC.
Gardner, see J.A. 931, and when appealing to the Board,
Universal did not challenge that finding in its opening
brief, see J.A. 1001–09, thus depriving the examiner of no-
tice that such an issue had to be addressed in the exam-
iner’s answer filed with the Board. The contention is
therefore forfeited. See
37 C.F.R. § 41.37(c)(iv). We see no
basis to disregard the forfeiture.
We have considered Universal’s remaining argu-
ments, which we find unconvincing. For the foregoing rea-
sons, we affirm the Board’s decision affirming the
examiner’s rejection of pending claims 1 and 12–16 as un-
patentable.
AFFIRMED
