PTAB

IPR2019-01612

Roku Inc v. Universal Electronics

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1. Case Identification

2. Patent Overview

  • Title: Relaying Key Code Signals Through a Remote Control Device
  • Brief Description: The ’642 patent relates to systems for controlling electronic devices that address the problem of remote controls having insufficient memory to store thousands of device command codesets. The invention discloses using a "key code generator device," such as a set-top box, to store extensive codesets, generate the appropriate key code upon user input from a remote, and transmit it for controlling a target consumer device.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 4, 6, 8, and 9 are obvious over Mishra in view of Dubil.

  • Prior Art Relied Upon: Mishra (Application # 2001/0005197) and Dubil (Patent 8,132,105).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mishra taught the core method of independent claim 1, which corresponds to the '642 patent's first embodiment. Mishra disclosed a remote control system where a set-top box (a "key code generator device") stores various control codes, receives a command signal ("keystroke indicator signal") from a remote control unit when a user presses a button, translates the signal into the appropriate control code ("generates a key code"), and transmits it back to the remote control. The remote control then relays this code to an electronic device like a television. Petitioner asserted that Dubil supplied the well-known, albeit missing, details of how such transmission occurs, specifically teaching the modulation of binary control codes onto a carrier signal and the inclusion of timing information to define the binary data.
    • Motivation to Combine: A POSITA seeking to implement the wireless communication between the set-top box and remote control in Mishra’s system would combine its teachings with a reference like Dubil to utilize the standard modulation techniques and data formats necessary for such communication.
    • Expectation of Success: Combining Mishra’s system architecture with Dubil’s well-known transmission methods would have been a straightforward implementation of known elements to yield predictable results.

Ground 2: Claims 2 and 22-25 are obvious over Rye in view of Dubil.

  • Prior Art Relied Upon: Rye (Application # 2004/0080428) and Dubil (Patent 8,132,105).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted the '642 patent's second embodiment, where the key code is transmitted directly from the generator to the end device. Petitioner contended that Rye disclosed a transceiver (a "key code generator device") that receives a "function control rf signal" from a remote control, uses that signal to identify a corresponding binary coded infrared (IR) signal from a stored code library ("generates a key code"), and transmits the IR signal directly to a selected audiovisual component ("electronic consumer device"). Dubil was again cited to provide the common-knowledge teachings of modulating the generated key code onto an IR carrier frequency and the format of the codeset, including timing information defining the binary code.
    • Motivation to Combine: A POSITA implementing Rye’s system would have been motivated to consult a reference like Dubil to understand the granular details of modulating binary data for IR transmission, as this was a conventional and necessary step.
    • Expectation of Success: Both Rye and Dubil described systems for updating and transmitting control codes. A POSITA would have reasonably expected success in applying Dubil's standard modulation techniques to Rye's system to achieve the intended, predictable function of IR control.

Ground 3: Claims 1, 2, 3, 4, 6, 8, 9, and 22-25 are obvious over Caris in view of Skerlos.

  • Prior Art Relied Upon: Caris (Patent 7,562,128) and Skerlos (Patent 4,426,662).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Caris taught a comprehensive system covering both embodiments of the '642 patent. Caris disclosed a set-top box that receives a keystroke signal from a remote, downloads corresponding control codes from a server database, and can transmit those codes either back to the remote control (for relaying) or directly to an electronic consumer device via an IR/RF blaster. Petitioner argued Skerlos provided the necessary teachings on modulation, disclosing a well-known binary pulse code modulation (PCM) scheme used to transmit control codes via IR. Skerlos explicitly described how timing information defined the binary "one" and "zero" states for modulation onto a carrier signal.
    • Motivation to Combine: A POSITA implementing the wireless transmission in Caris’s system would combine its teachings with Skerlos’s modulation scheme to ensure a reliable, noise-resistant transmission of control codes. This was a known engineering goal to improve signal integrity.
    • Expectation of Success: Both Caris and Skerlos described the wireless IR transmission of control codes. Implementing Skerlos's established modulation techniques within Caris's system architecture would have been a predictable combination of known elements for a known purpose.

4. Key Claim Construction Positions

  • Petitioner argued that the challenged claims are obvious under the plain and ordinary meaning of the claim terms, as well as under the constructions adopted in a parallel district court litigation. Key constructions from that litigation, which Petitioner contended the prior art meets, included:
  • "key code signal": Construed by the court as "a signal containing a modulated key code."
  • "key code generator device": Construed by the court as a means-plus-function term under 35 U.S.C. §112(6) with the function to "generate a key code" and the corresponding structure being a set-top box, television, computer, or equivalents thereof.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6, 8, 9, and 22-25 of the '642 patent as unpatentable.