PTAB

IPR2013-00152

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 ’906 patent discloses a method and apparatus for programming a universal remote control. The technology involves selecting an appropriate device command set from a plurality of sets stored in the remote's memory by assigning an "effects observable command" (e.g., 'power off') from each set to one or more user-actuated keys, allowing a user to cycle through the sets until the controlled device responds correctly.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1 and 16 under 35 U.S.C. §102 over Telefunken

  • Prior Art Relied Upon: Telefunken (German Patent DE 3313493).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that, under its proposed claim construction, Telefunken teaches every element of claims 1 and 16. Specifically, Telefunken’s remote control enters a "start-up phase" where sequential actuations of a single key (e.g., the "PLAY" button) cause the remote to assign and transmit commands from different stored command sets. This process continues until the user observes the correct function on the electronic device, halts the process, and thereby sets the remote. Petitioner asserted Telefunken discloses all corresponding means-plus-function limitations of claim 16, identifying structures like a microprocessor and code selection circuits.
    • Key Aspects: This ground is contingent on the key claim construction that "one...switch or key" means a single physical key is used to cycle through all command sets.

Ground 2: Obviousness of Claims 1 and 16 under 35 U.S.C. §103 over Sony in view of Telefunken

  • Prior Art Relied Upon: Sony (European Patent Application EP 0577267A1) and Telefunken (German Patent DE 3313493).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses an alternative construction where command sets are assigned to a plurality of keys. Petitioner asserted Sony teaches the core concept of assigning different command signal groups (command sets) to different numbered keys on a remote (a one-to-one mapping). However, Sony did not expressly teach transmitting the command immediately upon selection. Telefunken supplied this missing element, teaching the sequential actuation of keys to test codes and the immediate transmission of a command upon each actuation to provide user feedback.
    • Motivation to Combine: A POSITA would combine Sony’s one-to-one key-to-command set mapping with Telefunken's immediate command transmission feature. This combination would improve user experience by allowing a user to see the result of a code set selection instantly without needing to press a separate button to test it, which was a known design goal.
    • Expectation of Success: Combining these known remote control programming features was a straightforward integration of predictable electronic functions.

Ground 3: Obviousness of Claims 1, 10, and 12 under 35 U.S.C. §103 over GHV-300/GHV-500 in view of MRH7700

  • Prior Art Relied Upon: GHV-300/GHV-500 (GoldStar VCR Operating Manuals) and MRH7700 (Rauland-Borg IR Remote Control Manual).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued the GoldStar (GHV) manuals teach a sequential programming method where a user presses different numeric keys (e.g., '1', '2', '3') with the Power button to test different codes. The MRH7700 manual teaches a similar method of entering a code and discloses that a successful match will cause the target device (e.g., a TV) to turn off, providing an "effects observable command." MRH7700 thus provides the explicit teaching of transmitting a command that produces an observable effect upon selection.
    • Motivation to Combine: A POSITA would combine the sequential key actuation method of GHV with the immediate feedback mechanism of MRH7700. This modification would enable a user to quickly test different command sets mapped to different keys and immediately observe the result, streamlining the programming process, a common objective in the field.
    • Expectation of Success: The combination involved applying a known user-feedback technique (immediate command transmission) to a standard code selection method, representing a predictable design choice.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds combining Telefunken with Casio (Japanese Patent JP 6311567) to add limitations for a "power off" command and device "mode keys." Other grounds combined Sony, Telefunken, and Casio, as well as combinations involving GHV-300/GHV-500, Pioneer (Pioneer VSX-5900S Operating Instructions), and either Casio or Telefunken.

4. Key Claim Construction Positions

  • Petitioner argued for a narrow construction of the phrase "assigning an effects observable command from each of said plurality of command sets to one of said plurality of assignable user actuated switches or keys" found in independent claims 1 and 16.
  • Petitioner contended that under the broadest reasonable interpretation, the term "one" must be interpreted as a single switch or key. This construction is central to the anticipation argument in Ground 1, which relies on a single key being used to cycle through multiple command sets.
  • Petitioner supported this position by noting that the Patent Owner, in a counterpart European prosecution, amended similar claim language from "one" to "a respective one" to distinguish the invention from prior art, implying an acknowledgment of the narrower scope of the original term.
  • For the means-plus-function terms in claim 16, Petitioner identified corresponding structures in the ’906 patent's specification, such as a general-purpose microprocessor, LED driver circuit, and infrared LED, while also noting that the district court in a parallel litigation found one term indefinite for lack of a disclosed algorithm.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 10, 12, and 16 of the ’906 patent as unpatentable.