PTAB

IPR2014-01106

Universal Remote Control Inc v. Universal Electronics Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: UNIVERSAL REMOTE CONTROL SYSTEM
  • Brief Description: The ’313 patent relates to a universal remote control system that stores a library of infrared (IR) code data in a non-volatile memory. The system allows this code data to be updated by coupling the remote control to an external computer, either directly or through a data transmission system like a telephone line and modem.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wozniak, CS-232 Manual, and Hastreiter - Claims 1, 2, and 20 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 publication by CL 9), and Hastreiter (Patent 4,667,181).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wozniak disclosed the core universal remote system, including a remote with a CPU and memory that could connect to an external computer via a serial port to receive and load data. To address the claimed limitation of receiving "code data for creating appropriate IR lamp driver instructions"—a distinction the patent owner relied upon during prosecution—Petitioner pointed to the CS-232 Manual. This manual, published by the assignee of Wozniak for the same commercial product, explicitly taught using its CS-232 serial interface to load and replace data, including IR codes, in the remote's memory. To meet the "uniquely designed" keyboard circuit limitation, which Wozniak did not detail, Petitioner cited Hastreiter, which disclosed the claimed circuit design using diodes between row and column lines to minimize interconnections.
    • Motivation to Combine: A POSITA would combine Wozniak with the CS-232 Manual because the manual described an interface for the same commercial product (the CL 9 CORE remote) disclosed in the Wozniak patent, making it obvious to enable the remote's full, documented capabilities. A POSITA would incorporate Hastreiter’s well-known keyboard design into Wozniak's remote to achieve the known and desirable benefit of a more efficient electronic design with fewer connections.
    • Expectation of Success: Petitioner asserted that the combination involved implementing a documented interface (CS-232 Manual) and a standard keyboard design (Hastreiter) with a known remote control system (Wozniak), making the outcome and success highly predictable.

Ground 2: Obviousness over Ciarcia and Hastreiter - Claims 1, 2, and 20 are obvious over Ciarcia in view of Hastreiter.

  • Prior Art Relied Upon: Ciarcia (a 1987 BYTE magazine article titled "Build a Trainable Infrared Master Controller") and Hastreiter (Patent 4,667,181).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the Ciarcia article taught all major elements of the challenged claims. Ciarcia described a complete, buildable universal remote with a microprocessor and RAM that connected to an IBM PC via a standard RS-232 interface. This connection was for the express purpose of setting up device menus and uploading "synthesis data," including IR signal data, to the remote's memory for storage. Ciarcia thus taught a complete system for updating a remote's IR codes from an external computer. As in the first ground, Petitioner argued that Hastreiter supplied the claimed "uniquely designed" keyboard circuit using diodes, a detail not specified in Ciarcia.
    • Motivation to Combine: A POSITA building the remote control system taught by Ciarcia would have been motivated to incorporate the keyboard design from Hastreiter. Hastreiter's design achieved the well-understood benefit of minimizing the number of required interconnections to the microprocessor, which was a routine design choice for improving the efficiency and manufacturability of electronic devices.
    • Expectation of Success: Integrating a known, advantageous keyboard circuit from Hastreiter into the remote control system of Ciarcia was a straightforward engineering task with a predictable and successful outcome.

4. Key Claim Construction Positions

  • Petitioner argued that several means-plus-function limitations in claims 1, 2, and 20 required construction and contended that the ’313 patent’s specification lacked adequate supporting structure for the claimed functions.
  • "data coupling means": A central contention was that the specification failed to disclose adequate structure corresponding to the claimed function of "periodically coupling" the computer to the remote. Petitioner noted that while the patent disclosed an RS-232 interface for receiving data "at any time," it described no specific structure, software, or algorithm for performing the coupling periodically.
  • Indefiniteness Contention: Petitioner asserted that this lack of corresponding structure for key functions renders the claims indefinite. Crucially, Petitioner argued that if the Board were to find the disclosed structure sufficient, then the prior art combinations disclosed at least that same structure, rendering the claims obvious.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, and 20 of Patent 5,255,313 as unpatentable.