PTAB

IPR2017-01936

Sony Corp v. ARRIS Enterprises LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Remote Control Device with Integrated Display Screen for Controlling a Digital Video Recorder
  • Brief Description: The ’156 patent describes a system and method for controlling a digital video recorder (DVR). The system's remote control features an integrated display screen used to show the DVR’s user interface (UI), such as a play list of recorded programs or an electronic program guide (EPG), thereby preventing the UI from obscuring the program being viewed on the main television screen.

3. Grounds for Unpatentability

Petitioner asserted that all challenged claims are unpatentable under 35 U.S.C. §103 based on a single, primary combination of prior art references. The petition methodically applied this combination to each of the challenged claims.

Ground 1: Claims 1-31 are obvious over Haramoto, alone or in view of Terakado and Ellis.

  • Prior Art Relied Upon: Haramoto (Japanese Patent Application Laid-Open Publication No. H8-65622), Terakado (Patent 6,246,441), and Ellis (Patent 7,761,892).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the primary reference, Haramoto, which was not considered during the original prosecution, disclosed all essential elements of the ’156 patent. Haramoto described a remote control with an integrated LCD screen for managing a "with-memory digital TV device" (a DVR). Critically, Haramoto’s remote could display a "video shelf"—a list of previously recorded programs—on its own screen, directly addressing the core problem of the ’156 patent. Haramoto also taught a wireless link (infrared or radio wave) and user controls (a D-pad and trackball) for navigating menus.

      Petitioner contended that even if Haramoto was only suggestive on certain points, Terakado and Ellis demonstrated these features were well-known and their combination obvious. Terakado was cited to show it was well-known for a remote control to have a wireless receiver for obtaining and displaying data like an EPG on its integrated screen. This reinforced the argument that enabling Haramoto's remote to receive a play list from the DVR was an obvious implementation. Ellis was cited to show that DVR systems commonly featured interactive program guides capable of displaying categorized lists of recorded programs, programs scheduled for recording, and EPGs, all navigable via remote control buttons. Petitioner argued Ellis confirmed that features like displaying a recording list (claim 3) or a grid-based EPG (claim 13) were conventional UI elements for a DVR system like Haramoto's.

      For the independent apparatus claims (1, 6) and method claims (20, 25, 30, 31), Petitioner mapped Haramoto to the core system: a remote with a display for a DVR. Haramoto's "video shelf" was mapped to the claimed "play list." Haramoto's D-pad and trackball were mapped to the "plurality of user controls." Terakado and Ellis were used to bolster the argument that a POSITA would have found it obvious to implement bi-directional communication to transfer the play list to the remote for display, and to use the controls to select an item for playback. For dependent claims, these references were used to show the obviousness of adding features like a dedicated control for displaying the play list (claim 2), receiving a "recording list" of scheduled programs (claim 3), and displaying an EPG (claim 12).

    • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings to implement the functionalities fully disclosed or suggested by Haramoto using the conventional techniques shown in Terakado and Ellis. The motivation was not to create a new device, but to use known, off-the-shelf solutions to achieve the predictable result of displaying various DVR-related lists on Haramoto's remote control screen. For instance, a POSITA would be motivated to use Terakado's explicit bi-directional transceiver to enable the transfer of play list data to Haramoto's remote, thereby providing the functionality Haramoto already described.

    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success. The combination involved integrating well-understood components and software features (list-based UIs, EPGs, wireless data transfer) into a known system architecture. Petitioner argued that implementing Terakado’s data transfer or Ellis's UI features within Haramoto's system would have yielded predictable results without any unexpected challenges or required technological leaps.

4. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-31 of the ’156 patent as unpatentable under 35 U.S.C. §103.