PTAB

IPR2013-00127

Universal Remote Control Inc v. Universal Electronics Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Selecting a Remote Control Command Set
  • Brief Description: The ’067 patent discloses a universal remote control for transmitting infrared signals to operate various electronic appliances. The technology centers on a method for matching the remote to a specific appliance by selecting command codes from a pre-stored library and assigning a subset of these codes to a "macro" pushbutton to execute a sequence of commands with a single press.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 are obvious over Rumbolt in view of Magnavox

  • Prior Art Relied Upon: Rumbolt (Patent 4,774,511) and Magnavox (a 1987 PR Newswire press release).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rumbolt taught a universal remote control containing the core features of the ’067 patent, including a keyboard, a library of command codes for different manufacturers, and "chain commands" functionally equivalent to the claimed macro pushbutton. However, Rumbolt used cumbersome dual in-line package (DIP) switches for device selection. Petitioner contended that Magnavox, a press release describing a second-generation universal remote, explicitly taught the missing element: matching the remote to an appliance by entering a two-digit code using the keyboard's pushbuttons. The combination of Rumbolt's architecture with Magnavox's user-friendly device selection method allegedly rendered the claims obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references to improve usability and reduce manufacturing costs. Replacing Rumbolt's mechanical switches with the pushbutton code entry method taught by Magnavox was a logical step to create a more intuitive and cost-effective product, a well-understood goal in the consumer electronics field.
    • Expectation of Success: Petitioner asserted that substituting one known user input method (switches) for another (pushbutton code entry) was a simple design choice with predictable and successful results.

Ground 2: Claims 1, 2, 4, and 5 are obvious over Rumbolt, Magnavox, and Evans

  • Prior Art Relied Upon: Rumbolt (Patent 4,774,511), Magnavox (a 1987 press release), and Evans (Patent 4,825,200).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground supplemented the primary combination of Rumbolt and Magnavox by introducing Evans to further demonstrate the obviousness of the claimed macro functionality. While Rumbolt disclosed "chain commands," Petitioner argued that Evans provided stronger evidence by teaching a universal remote with "program keys" that could be configured to cause a "predetermined sequence of steps to be performed." This teaching directly corresponded to the claims' recitation of assigning a subset of codes to a macro pushbutton to transmit a plurality of commands.
    • Motivation to Combine: A POSITA seeking to enhance the functionality of the remote control described by Rumbolt and Magnavox would look to prior art like Evans. A POSITA would combine Evans’ more flexible programming teachings to improve upon Rumbolt’s command chaining feature, resulting in a more powerful and easily configurable remote control that met known market demands for advanced user functions.

Ground 3: Claims 1-6 are obvious over Wozniak in view of CORE

  • Prior Art Relied Upon: Wozniak (Patent 4,918,439) and CORE (a 1987 reference manual for the CL9 CORE remote control).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the Wozniak patent and the CORE reference manual described the same physical device. Wozniak provided a detailed technical disclosure of a programmable universal remote that could learn signals, control multiple appliances, and execute a series of commands from a single button press (a macro function). The CORE manual explicitly taught the user how to match the remote to different appliances (e.g., a TV) by using pushbuttons to access a specific "PAGE" of pre-stored commands from a library. Together, these references were alleged to teach every limitation of the challenged claims.
    • Motivation to Combine: A POSITA would have found it obvious to combine the teachings of Wozniak and CORE because the CORE manual was the user guide for the device technically described in the Wozniak patent. The combination was not one of disparate technologies but rather a consolidation of the technical disclosure and the operational instructions for a single, commercially available product, providing a complete picture of its capabilities.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-6 based on Rumbolt ’359 (Patent 4,703,359) and CORE. This argument was based on prosecution history, contending that the Patent Owner failed to properly amend the claims to incorporate all subject matter the Examiner had indicated as allowable, thereby rendering the issued claims unpatentable over the same art cited during prosecution.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of Patent 6,587,067 as unpatentable.