PTAB

IPR2014-01104

Universal Remote Control Inc v. Universal Electronics Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Remote Control System
  • Brief Description: The ’761 patent describes a universal remote control system featuring a microprocessor and non-volatile memory. The system is designed to be coupled to an external computer to update its library of control codes and operating instructions via various data transmission methods, including direct connection, telephone lines with modems, or television signals.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wozniak, CS-232 Manual, and Hastreiter - Claims 1, 9-10, and 14-17 are obvious over Wozniak in view of the CS-232 Manual and Hastreiter.

  • Prior Art Relied Upon: Wozniak (Patent 4,918,439), CS-232 Manual (a 1988 user manual), and Hastreiter (Patent 4,667,181).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wozniak taught a universal remote control system with a microprocessor, memory, and a serial input for receiving data from an external source like a computer. The Petitioner contended that while the patent owner argued during prosecution that Wozniak only disclosed receiving "commands," the CS-232 Manual—published by the same company (CL 9, Inc.) for the commercial version of Wozniak’s remote—explicitly taught using the serial interface to load both "instruction codes" and infrared "code data" into the remote’s memory. This directly addressed the alleged distinguishing feature of the ’761 patent. Furthermore, Petitioner asserted that Hastreiter disclosed the specific "uniquely designed" keyboard circuit with diodes that was recited in the ’761 patent but not explicitly shown in Wozniak.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Wozniak with the CS-232 Manual because the manual provided the operational details for the very product described in the Wozniak patent, making it a natural and obvious source for implementation. A POSITA would incorporate Hastreiter’s keyboard design into Wozniak’s remote to achieve the well-known and stated benefit of minimizing the number of required interconnections to the microprocessor, a standard design consideration.
    • Expectation of Success: The combination involved standard electronic components and a well-defined RS-232 interface. The CS-232 Manual provided explicit instructions for the data transfer protocol, ensuring a POSITA would have a high expectation of successfully creating the claimed system.

Ground 2: Obviousness over Ciarcia and Hastreiter - Claims 1, 9-10, and 14-17 are obvious over Ciarcia in view of Hastreiter.

  • Prior Art Relied Upon: Ciarcia (a BYTE magazine article from March 1987) and Hastreiter (Patent 4,667,181).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ciarcia taught building a "Trainable Infrared Master Controller" that functions as a universal remote. Ciarcia’s system included a microprocessor, RAM, and an RS-232 interface to connect to a personal computer for training and setup. Critically, Ciarcia explicitly described loading "menu" data (equivalent to instruction codes) and "synthesis data" (including IR signal data) from the computer into the remote's memory. This combination of elements taught the core functionality of the challenged claims. As in the first ground, Petitioner relied on Hastreiter to supply the claimed keyboard circuit design for minimizing processor interconnections.
    • Motivation to Combine: A POSITA building the remote described in Ciarcia would be motivated to incorporate Hastreiter's efficient keyboard circuit design for its stated and well-understood advantage of reducing component count and simplifying the electronic layout. This was presented as a simple substitution of one known keyboard design for another to achieve a predictable improvement.
    • Expectation of Success: The technologies disclosed in Ciarcia and Hastreiter were conventional and well-understood at the time. Combining a known keyboard matrix with a microprocessor-based remote control system using a standard RS-232 interface was a straightforward task for a POSITA with a high likelihood of success.

4. Key Claim Construction Positions

  • Petitioner dedicated significant argument to the construction of several means-plus-function limitations, as the patent had expired and was subject to a narrower construction standard.
  • For the key term "data coupling means" (recited in claims 1, 14, and 15), Petitioner argued that the structure disclosed in the ’761 patent’s specification was limited to a serial receiving port coupled to a CPU input.
  • Critically, Petitioner contended that the specification lacked any corresponding structure for performing the full claimed functions, such as the specific software for handling "instruction codes" or "code data," or any mechanism for performing the "periodically coupling" function. This argument asserted that the claims were potentially indefinite but also set a low bar for the prior art to meet, suggesting the prior art need only disclose as much structure as the patent itself.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review (IPR) and the cancellation of claims 1, 9-10, and 14-17 of Patent 5,414,761 as unpatentable under 35 U.S.C. §103.