PTAB

IPR2014-01112

Universal Remote Control Inc v. Universal Electronics Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Computer Programmable Remote Control
  • Brief Description: The ’059 patent describes a system and method for creating user-selectable screen objects, such as soft keys, on a general-purpose computer using a development program. These configured screen objects are then transferred or downloaded to a hand-held, programmable remote control unit.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lexicon in view of Ciarcia - Claims 13-17, 19-26, and 30

  • Prior Art Relied Upon: Lexicon (a 1994 owner's guide and programming manual for the 500T System Controller) and Ciarcia (a March 1987 article in BYTE magazine titled "Build a Trainable Infrared Master Controller").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lexicon discloses a programmable touchscreen remote controller with a built-in drawing program for creating and editing screen objects like buttons, assigning commands, and placing text. This system taught the core functionality of creating a custom graphical interface on the device itself. Ciarcia taught using a more powerful external general-purpose computer (an IBM PC) to create and set up menus of commands, which were then downloaded via an RS-232 interface to a separate, less-capable "Master Controller" remote. Petitioner contended that the combination of these references taught all limitations of the challenged claims, including the method steps of independent claim 23 which mirror the system instructions of independent claim 13.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Ciarcia’s PC-based development approach with Lexicon’s sophisticated graphical interface. Ciarcia explicitly motivated this combination by stating that programming on a PC is much easier and simplifies the logic, as PCs have full keyboards, displays, storage, and high-level programming languages. A POSITA would have recognized the benefit of using a PC’s superior capabilities to design the customizable screens taught by Lexicon, rather than performing the design on the more limited remote control hardware itself.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in making this combination. Both references describe systems for programming remote controls, and Ciarcia specifically teaches the well-understood method of connecting a PC to a remote device via a standard RS-232 interface for programming and data transfer. Applying this known PC-based programming methodology to the graphical objects of Lexicon was a predictable implementation of known technologies.

Ground 2: Obviousness over AMX in view of Admitted Prior Art - Claims 13-17, 19-26, and 30

  • Prior Art Relied Upon: AMX (a 1996 instruction manual for Color Passive-Matrix LCD Touch Panels) and Admitted Prior Art (admissions within the ’059 patent specification).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that AMX discloses a complete system that meets the claim limitations. AMX taught using DOS- and Windows-based design programs (TPDOC and TPDesign) on a general-purpose computer to create custom pages with buttons, icons, and sliders. These custom pages and drawings could then be uploaded and downloaded to AMX’s touchscreen remote panels via a standard RS-232 port communication. The ’059 patent itself admits that "object-oriented editing controls [are]... known in the art." Petitioner argued that this admission fills any gap regarding the specific type of editing tools used in the development program.
    • Motivation to Combine: The motivation to combine AMX with the admitted prior art was straightforward. AMX already taught using a general-purpose computer with Windows-based design software to create the remote’s interface. A POSITA, knowing that object-oriented editing tools were available on general-purpose computers, would be naturally motivated to use these known, powerful, and efficient tools within the software framework already disclosed by AMX. This was not a combination of disparate systems but rather the use of a known tool (object-oriented controls) within its expected environment (PC software development) for its intended purpose (creating graphical user interfaces).
    • Expectation of Success: There was a high expectation of success because the combination merely involved employing known object-oriented programming techniques in the Windows-based TPDesign software taught by AMX. As object-oriented design was a standard practice for creating graphical interfaces on platforms like Windows, a POSITA would have found it entirely predictable to apply these methods to design the buttons and icons for the AMX touch panel.

4. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 13-17, 19-26, and 30 of the ’059 patent as unpatentable under 35 U.S.C. §103.