PTAB

IPR2014-01084

Universal Remote Control Inc v. Universal Electronics Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Monitoring Remote Control Transmissions
  • Brief Description: The ’468 patent discloses a system and method for monitoring transmissions from a remote control to update a database that tracks the operational state of one or more remotely-controllable appliances. The system determines the intended command and updates a "state table" to reflect the new state of the target appliance.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Cohen - Claims 1, 2, 11, 27-29, 33, 35, 45, 46, and 49 are anticipated by, or in the alternative obvious over, Cohen.

  • Prior Art Relied Upon: Cohen (Patent 5,235,414).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cohen, titled "Non-Obtrusive Programming Monitor," discloses every element of the challenged claims. Cohen’s system includes a monitor (a recipient device) that receives infrared signals from remote controls for multiple target appliances (e.g., TV, VCR). The monitor’s microprocessor decodes the signal to determine the intended operation and appliance, compares it against a plurality of learned commands stored in memory, and updates stored data to reflect the new state of the appliance (e.g., channel selection). Petitioner contended that Cohen's Random Access Memory (RAM), which stores tuning information and remote control functions, serves as the claimed "state table." Further, Cohen explicitly teaches a "learning" phase where the microprocessor associates remote control functions with their meaning, meeting the limitation of claim 11.
    • Key Aspects: Petitioner emphasized that although the ’468 patent’s background section discusses Cohen, it was never considered by the examiner during prosecution.

Ground 2: Anticipation/Obviousness over Harris - Claims 1, 2, 27, 29, 33, 35, 46, and 49 are anticipated by, or in the alternative obvious over, Harris.

  • Prior Art Relied Upon: Harris (Application # 2001/0045819).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Harris discloses a "state-based remote control system" that monitors user selections on a keypad to determine and update the state of all controlled external electronic devices. This system explicitly maintains "Current State Data" for each device, which is immediately updated to reflect any changes caused by user actions. This directly maps to the core method of claim 1: receiving a transmission, determining its intent, and updating data to reflect the resulting state of a target appliance. Harris also explicitly describes and illustrates a "Current State Data" table, which Petitioner argued meets the "state table" limitation of dependent claims 2, 29, and 46. The data is maintained locally within the electronic system that receives the keypad transmissions, meeting limitations of claims 33 and 49.

Ground 3: Obviousness over Harris in view of CORE and/or Hatakeyama - Claims 11, 28, and 45 are obvious over Harris in view of CORE and/or Hatakeyama.

  • Prior Art Relied Upon: Harris (Application # 2001/0045819), CORE (CORE Reference Manual, 1987), and Hatakeyama (Patent 6,545,587).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that to the extent certain dependent claims are not fully disclosed by Harris alone, they are rendered obvious by combining Harris with other prior art.
      • Claim 11 (learning commands): While Harris describes a system that operates on commands, CORE explicitly teaches a universal remote that can "learn, or 'capture', the signals from virtually every infrared remote control device."
      • Claims 28 and 45 (supplementing data directly from appliance): While Harris updates state based on user commands, Hatakeyama discloses a bidirectional remote control system capable of receiving feedback and downloading operating state information directly from the controlled device.
    • Motivation to Combine: A POSITA would combine the state-tracking system of Harris with the well-known "learning" functionality of CORE to create a more versatile and adaptable universal control system. Similarly, a POSITA would integrate the bidirectional feedback taught by Hatakeyama into the Harris system to improve its reliability by confirming the actual state of an appliance, rather than merely inferring it from user commands. This would solve potential synchronization issues.
    • Expectation of Success: Integrating known features like command learning and bidirectional communication into a state-based control system were common design choices in the field, and a POSITA would have reasonably expected success in implementing these improvements.

  • Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges against all claims based on the Niles IntelliControl Reference Manual, which discloses a Main System Unit that tracks the state of connected components, and against claim 11 based on Niles in view of CORE.

4. Key Claim Construction Positions

  • "state table" (claims 2, 29, 46): Petitioner argued that based on the ’468 patent’s specification and Figure 4, the term "state table" should be construed broadly as a memory that "stores parameters representative of one or more states of one or more appliances." This construction does not require a specific data structure beyond associating a function with its corresponding state. Petitioner contended this construction allows prior art references that use general-purpose memory (e.g., RAM) to store state information to satisfy this claim limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 11, 27-29, 33, 35, 45, 46, and 49 of Patent 7,126,468 as unpatentable.