HTC Corporation v. Salazar, Joe

1. Case Identification

• Patent #: 5,802,467
• Filed: December 4, 2017
• Petitioner(s): HTC Corp.; HTC America, Inc.
• Patent Owner(s): Joe Andrew Salazar
• Challenged Claims: 1-7, 10, 14, 17, 23, 26-32, and 34

2. Patent Overview

• Title: Wireless and Wired Communications, Command, Control and Sensing System for Sound and/or Data Transmission and Reception
• Brief Description: The ’467 patent discloses a wireless remote control system for controlling external electronic devices. The core of the purported invention is a data compression scheme where "parameter sets" are stored in memory to recreate full command code sets, thereby reducing the required storage space compared to storing the entire command codes directly.

3. Grounds for Unpatentability

Ground 1: Obviousness over Goldstein and Keenan - Claims 1-7, 10, 17, 23, 26-32, and 34 are obvious over Goldstein in view of Keenan.

• Prior Art Relied Upon: Goldstein (Patent 5,410,326) and Keenan (Patent 4,866,434).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Goldstein, a patent for a universal programmable remote control, discloses nearly all elements of the challenged claims. Goldstein teaches a system with a microprocessor, memory, a user interface (touch screen with icons), and an infrared (IR) transceiver for controlling multiple external devices. The only key element Goldstein does not explicitly teach is the specific memory-saving scheme of storing compressed "parameter sets" to recreate command codes. Petitioner asserted that Keenan directly teaches this missing element. Keenan describes a universal remote that uses compressed data (a "format structure" and "compressed functions table") to make efficient use of limited memory, which is precisely the invention claimed in the ’467 patent. The combination of Goldstein's hardware system with Keenan's data compression method allegedly renders independent claims 1, 10, and 34 obvious.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would be motivated to combine these references to solve a known problem. Goldstein's universal remote is designed to control a variety of devices, which requires storing many IR codes. Keenan explicitly addresses the known problem that memory capacity limits the number of devices a universal remote can control. A POSITA would therefore look to known compression techniques, like those in Keenan, to improve Goldstein’s device by increasing the number of command codes it could store, resulting in a more desirable product.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because combining a known data compression technique (Keenan) with a standard universal remote architecture (Goldstein) involves applying a known solution to a known problem to yield predictable results.

Ground 2: Obviousness over Goldstein, Keenan, and Thompson - Claim 14 is obvious over Goldstein in view of Keenan and Thompson.

• Prior Art Relied Upon: Goldstein (Patent 5,410,326), Keenan (Patent 4,866,434), and Thompson (Patent 5,465,401).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon Ground 1 and specifically targets claim 14, which adds the limitation of a "backup battery power source" to the base station recited in claim 10. Petitioner argued that the combination of Goldstein and Keenan teaches the base station of claim 10. Goldstein further teaches that its base station (a cable converter) operates with a "battery-backed non-volatile 512K RAM," inherently disclosing a backup battery. Thompson is cited as additional evidence teaching that a power supply for a communication device may consist of one or more batteries.
  • Motivation to Combine: The motivation is straightforward functionality. A POSITA would combine the base station of Goldstein/Keenan with a backup battery (as taught by both Goldstein and Thompson) for the predictable and desirable purpose of preserving memory and system settings in the event of a primary power failure.
  • Expectation of Success: A POSITA would have an absolute expectation of success in using a battery to provide backup power to an electronic device, as this was a common and well-understood design practice.

4. Key Claim Construction Positions

• Petitioner stated that, for the purposes of the inter partes review (IPR) petition, it would apply the claim constructions from a related district court litigation (Joe Andrew Salazar v. HTC Corporation, 2:16-cv-1096 (EDTX)). Key constructions central to the obviousness arguments include:
  • "base station": Construed as "a device separate from the handset that has a telephone line interface." This was relevant for identifying the corresponding component in Goldstein.
  • "memory device coupled to said microprocessor configured to store a plurality of parameter sets... such that the memory space required... is smaller": This term, central to the patent's novelty, was construed to require a memory device that stores parameter sets used by the microprocessor to recreate a command code set, where the parameters take up less space than the full code set. This construction allowed Petitioner to map Keenan's teachings of compressed data directly onto this limitation.
  • "a selector controlled by said microprocessor for enabling said radio frequency transceiver and said infra-red frequency transceiver": This term, relevant to claims 2 and 10, was construed to mean a selector that enables the RF and IR transceivers to transmit and receive signals as selected by a user. This helped map Goldstein's logic for handling both communication types.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7, 10, 14, 17, 23, 26-32, and 34 of the ’467 patent as unpatentable under 35 U.S.C. §103.