PTAB

IPR2013-00168

Universal Remote Control Inc v. Universal Electronics Inc

Key Events

Petition

petition

Title: Favorite Key Macro Command and Chained Macro Command in a Remote Control
Brief Description: The ’426 patent discloses a remote control with a method and apparatus for programming and using "macro" keys to select favorite television channels. The invention allows a user to define a sequence of keystrokes (e.g., channel numbers) and assign that sequence to a single macro key for rapid one-touch recall.

Prior Art Relied Upon: Realistic (Universal Remote Control Owner's Manual, Catalog No. 15-1903).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the Realistic manual taught all features of the challenged claims. Realistic, a user manual for a commercially available universal remote control, described a "favorite-channel feature" allowing a user to specify up to 32 favorite channels. It explicitly taught a macro entry/definition program where a user could assign a command sequence, such as selecting a favorite channel, to a specific key, and a macro playback program to execute that sequence.
- Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner contended that to the extent Realistic did not expressly disclose a microprocessor, it would have been an obvious design choice for a person of ordinary skill in the art (POSITA) to implement the remote's described functions using a standard microprocessor and memory, which were common components for such devices at the time.
- Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in using a microprocessor to implement the well-defined macro functions described in the Realistic manual.

Prior Art Relied Upon: Wozniak (Patent 4,918,439).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Wozniak, which discloses a programmable master remote controller, taught every element of the challenged claims. Wozniak described a remote with a microprocessor, memory, and keyboard that could learn and store sequences of IR commands as macros. The patent explicitly detailed programming a macro to perform multiple functions with a single button press, such as turning on a television and selecting a specific channel. Petitioner provided a detailed, element-by-element chart mapping the limitations of claims 1, 4, 5, 10, and 13 to specific disclosures in the Wozniak patent.

Prior Art Relied Upon: Matsushita (Japanese Patent Application JP5526759) and Darbee (Patent 4,959,810).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Matsushita taught the core software-based functionality of the claims, including programming a macro key to store and recall a two-digit channel number. The Darbee patent, which the ’426 patent incorporated by reference for its description of electrical circuitry, disclosed the necessary hardware elements, including a microprocessor, memory, keyboard with macro keys, and IR driver circuitry.
- Motivation to Combine (for §103 grounds): A POSITA would combine Matsushita’s programming method with Darbee's well-established hardware architecture. The motivation was to implement Matsushita's features in a cost-effective and efficient manner using a known hardware platform, thereby reducing the number of components and simplifying the design.
- Expectation of Success (for §103 grounds): There would be a high expectation of success, as the combination involved applying known software logic (Matsushita) to a standard, compatible hardware platform (Darbee) for a remote control.
Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Realistic, Matsushita, or Wozniak with publications from DAK or Sony to teach sequencing through multiple favorite channels with a single designated key.

Means-Plus-Function Terms: A central part of Petitioner’s argument focused on the construction of several means-plus-function limitations in claims 1, 2, 5, and 10 (e.g., "means for determining if a predetermined keystroke sequence...is...a command").
Insufficient Structure: Petitioner contended that for several of these functional claims, the ’426 patent specification failed to disclose adequate corresponding structure, instead pointing only to a generic microprocessor without a specific algorithm. Petitioner noted that the district court in parallel litigation agreed with this assessment in its `Markman order`, finding that certain claim phrases lacked sufficient structural support under 35 U.S.C. §112, paragraph 6. For the IPR, this alleged lack of specific structure supported a broad construction of the claims, making them more susceptible to invalidation by the prior art.

Defective Priority Claim: Petitioner argued that the ’426 patent was not entitled to the benefit of its claimed priority applications, including the application that led to the Darbee ’810 patent.
Lack of Common Inventor: The primary basis for this argument was the lack of a common inventor between the ’426 patent and its alleged priority applications, a requirement under 35 U.S.C. §120. This defect in the priority chain meant the effective filing date of the ’426 patent was its actual filing date of December 11, 1992, which rendered the Darbee ’810 patent (issued in 1990) a valid prior art reference under 35 U.S.C. §102(b).

Time Bar under §315(b): Petitioner argued that this IPR was not time-barred by a prior lawsuit filed in 2000 (“First UEI Litigation”). Although that suit initially included the ’426 patent, the Patent Owner voluntarily dismissed all claims related to the ’426 patent with prejudice early in the litigation.
New Litigation Starts the Clock: Petitioner contended that the one-year statutory clock for filing an IPR began upon service of the complaint in the new litigation, filed in 2012. Allowing the petition would not create an "open-ended process," as it was the Patent Owner’s choice to file a second lawsuit on the same patent nearly a decade after dismissing the first.

Petitioner requested institution of an inter partes review and cancellation of claims 1-5, 10, and 13 of Patent 5,414,426 as unpatentable.