PTAB

IPR2019-01608

Roku Inc v. Universal Electronics Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: User Interface for a Remote Control Application
  • Brief Description: The ’532 patent describes a system for creating and executing macros on a controlling device, such as a universal remote. The system allows a user to select controllable appliances via a graphical user interface (GUI) to create a sequence of commands (a macro) for automating tasks like powering on a home theater system.

3. Grounds for Unpatentability

Ground 1: Obviousness over Humpleman and Walkenbach - Claim 10 is obvious over Humpleman in view of Walkenbach.

  • Prior Art Relied Upon: Humpleman (WO 98/59282) and Walkenbach ("Microsoft Excel 2000 Bible").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Humpleman teaches a system for commanding home devices where a user can save a "sequence of steps" as a macro through interactions with a GUI. However, Petitioner contended that Humpleman does not explicitly disclose using a program to automatically create the sequence of instructions. To supply this element, Petitioner cited Walkenbach, which describes Microsoft Excel’s "macro recorder" feature. Walkenbach was asserted to explicitly teach a program that automatically translates a user's GUI actions (e.g., formatting cells) into a sequence of executable code (VBA instructions) without the user programming each instruction.
    • Motivation to Combine: A POSITA would combine these references because Humpleman already describes a macro generation process based on user interactions. Walkenbach merely provides a well-known and conventional implementation for this concept—automatically generating code from GUI actions. Applying Walkenbach’s established technique to Humpleman’s remote control system would have been a predictable combination to improve automation.
    • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success because incorporating known software features from one program into another was a common and straightforward task, leading to the predictable result of a remote control that automatically generates macro code.

Ground 2: Obviousness over Wugoski - Claim 10 is obvious over Wugoski.

  • Prior Art Relied Upon: Wugoski (Patent 6,690,392).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Wugoski, as a single reference, discloses every limitation of claim 10. Wugoski describes a method for the "Automatic Generation of Macro Commands." It discloses a system with a GUI including representations of controllable appliances (e.g., a "TV" button) and a "command processor" (a program) that converts user interactions into machine-executable instructions. Petitioner argued that Wugoski teaches automatic creation, for instance, by detecting when a user has repeated a sequence of commands a threshold number of times and then automatically prompting the user to save it as a macro. The created macro is then executed when a user selects a corresponding macro key.

Ground 3: Obviousness over Harris - Claim 10 is obvious over Harris.

  • Prior Art Relied Upon: Harris (WO 01/69567).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Harris discloses a different form of "automatic creation." Harris describes a state-based remote control system where a user selects a high-level task, such as "Watch Television," from a GUI. The system's program then automatically creates the required sequence of instructions by comparing the current state of all relevant devices (e.g., TV power, input selection) to a pre-defined desired state for that task. The program generates and executes only the necessary commands to transition the devices to the desired state. This state-based logic, triggered by a single user interaction (task selection), was argued to meet the claim limitation of automatically creating an instruction sequence that reflects user interaction.

4. Key Claim Construction Positions

  • Petitioner argued for a specific construction of the term "using a program to automatically create the sequence of instructions".
    • Proposed Construction: "creating the sequence of instructions without each instruction being explicitly programmed by the user."
    • Significance: This construction was central to Petitioner's arguments. It sought to create a distinction between high-level user "actions" (e.g., selecting appliances from a GUI) and the underlying "instructions" (the specific command code) which are generated by the program. Petitioner supported this position by citing the patent’s prosecution history and statements allegedly made by the Patent Owner in co-pending litigation, which suggested that a sequence created entirely through direct user input for every step is not "automatically created."

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) or §325(d). The core reasons asserted were that the primary prior art references ([Humpleman](https://ai-lab.exparte.com/case/ptab/IPR2019-01608/doc/1003), [Walkenbach](https://ai-lab.exparte.com/case/ptab/IPR2019-01608/doc/1004), and [Harris](https://ai-lab.exparte.com/case/ptab/IPR2019-01608/doc/1008)) were never cited or considered during the original prosecution. While [Wugoski](https://ai-lab.exparte.com/case/ptab/IPR2019-01608/doc/1006) was listed in an Information Disclosure Statement, it was never substantively applied by the examiner against the claims. Petitioner justified presenting three grounds by arguing they were not redundant but were necessary to address the ambiguity of the term "automatic creation" in the ’532 patent, with each ground presenting a distinct and viable theory of unpatentability.

6. Relief Requested

  • Petitioner requests institution of an inter partes review trial for claim 10 of Patent 7,895,532 and cancellation of the claim as unpatentable.