PTAB

IPR2014-01103

Universal Remote Control Inc v. Universal Electronics Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: REMOTE CONTROL
  • Brief Description: The ’917 patent discloses a universal remote control that includes a microprocessor, a non-volatile memory for storing a library of infrared (IR) code data, and input keys. The central feature is a "two-way data coupling means," such as a serial port, that allows the remote to be connected to an external computer to update the code data and instructions stored in its memory.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wozniak, Ciarcia, and Hastreiter - Claim 1 is obvious over Wozniak in view of Ciarcia and Hastreiter.

  • Prior Art Relied Upon: Wozniak (Patent 4,918,439), Ciarcia ("Build a Trainable Infrared Master Controller," BYTE Mar. 1987), and Hastreiter (Patent 4,667,181).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wozniak disclosed a universal remote control system with all the basic components of claim 1, including a microprocessor, memory, IR output, and a two-way data coupling means (serial ports SIN and SOUT) for bidirectional communication with an external computer. Wozniak expressly taught that this connection could be used to load data into the remote's memory. Ciarcia supplemented this by teaching a "Master Controller" that used a PC connected via an RS-232 interface to upload and download "menu and synthesis data," which Petitioner equated to the "instruction codes or infrared code data" of claim 1. To address the "input means," Petitioner asserted that while Wozniak taught a keypad, Hastreiter taught the specific "uniquely designed" keyboard circuit (using diodes between row and column lines) recited in the ’917 patent’s specification as corresponding to the input means.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references for predictable results. A POSITA would have been motivated to implement Ciarcia’s more detailed PC-based programming interface with Wozniak’s remote to "simplify the logic" of creating, editing, and managing remote control functions, as Ciarcia explicitly taught. Furthermore, a POSITA would have been motivated to incorporate Hastreiter's efficient keyboard circuit into Wozniak’s remote design as a well-known technique for "minimizing the required number of interconnections" to the microprocessor, a common design goal.
    • Expectation of Success: The combination involved applying known technologies (PC interfaces, efficient keyboard circuits) to a standard universal remote for their conventional purposes, leading to a high expectation of success.

Ground 2: Obviousness over Ciarcia and Hastreiter - Claim 1 is obvious over Ciarcia in view of Hastreiter.

  • Prior Art Relied Upon: Ciarcia ("Build a Trainable Infrared Master Controller," BYTE Mar. 1987) and Hastreiter (Patent 4,667,181).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ciarcia alone disclosed nearly every element of claim 1. The Ciarcia article described building a complete "Infrared Master Controller" with a microprocessor, static RAM for storing menu and IR signals, IR emitters, and a two-way RS-232 serial interface for connecting to an IBM PC. This interface was explicitly used to download menus to the remote and upload the completed data back to the PC for storage. Petitioner contended this system met all limitations of claim 1 except for the specific "uniquely designed" keyboard circuit structure disclosed in the ’917 patent. Hastreiter was introduced to supply this missing element, as it explicitly taught a keyboard assembly using diodes to minimize microprocessor connections.
    • Motivation to Combine: The motivation to combine was straightforward. A POSITA implementing the remote control taught by Ciarcia would have recognized the need for a physical keypad. Hastreiter provided a well-known and advantageous solution for implementing that keypad. The motivation was to use an efficient, space-saving keyboard design that minimized the number of required I/O pins on the microprocessor, a standard consideration in electronics design at the time.
    • Expectation of Success: A POSITA would have had a high expectation of success in integrating Hastreiter’s standard keyboard matrix design into the remote controller system of Ciarcia, as it was a simple substitution of one known component for another to achieve a predictable improvement in design efficiency.

4. Key Claim Construction Positions

  • Petitioner argued that several terms in claim 1 were means-plus-function limitations that should be construed according to 35 U.S.C. §112, ¶ 6. The most critical construction was for "two-way data coupling means."
  • Term: "two-way data coupling means"
  • Proposed Construction: Petitioner asserted the dual functions are (1) enabling instruction codes or IR data to be supplied from an outside computer, through the means, directly to the CPU for entry into memory, and (2) enabling data to be transmitted from the remote, through the means, to a computer.
  • Identified Structure: The corresponding structure in the ’917 patent specification was identified as the terminals of a serial port coupled to the CPU, along with associated cabling and connectors.
  • Importance: This construction was central because Petitioner further contended that the ’917 patent’s specification failed to disclose the specific software or other structure necessary to perform the claimed function of handling "instruction codes or infrared code data" in particular, as opposed to just generic data. This assertion formed a key technical challenge to the patent's validity.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner’s primary technical contention, woven into its claim construction argument, was that the ’917 patent lacked adequate written description for the "two-way data coupling means."
  • Petitioner argued that while the patent disclosed the hardware for a generic serial port, it provided no disclosure of the specific software, programming, or algorithms required for the CPU to handle, process, and store the specific types of data recited in the claim (i.e., "instruction codes or infrared code data"). Petitioner asserted that to the extent the Board found the disclosed structure sufficient, the prior art (Wozniak and Ciarcia) disclosed at least as much structure for performing the identical function.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claim 1 of the ’917 patent as unpatentable under 35 U.S.C. §103.