Roku Inc v. Universal Electronics Inc

1. Case Identification

• Case #: IPR2019-01613
• Patent #: 8,004,389
• Filed: September 18, 2019
• Petitioner(s): Roku, Inc.
• Patent Owner(s): Universal Electronics, Inc.
• Challenged Claims: 2-5 and 7-15

2. Patent Overview

• Title: Relaying Key Code Signals Through a Remote Control Device
• Brief Description: The ’389 patent discloses a system to address insufficient memory in remote controls. It describes a "key code generator device," such as a set-top box, that stores numerous codesets and transmits specific key codes to a remote control, which then relays the command to an electronic consumer device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mishra, Dubil, and Van Ee - Claims 2 and 3 are obvious over Mishra in view of Dubil and Van Ee.

• Prior Art Relied Upon: Mishra (Application # 2001/0005197), Dubil (Patent 8,132,105), and Van Ee (Patent 6,774,813).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mishra taught the core method of claim 2: a set-top box (a "key code generator device") receiving a keystroke signal from a remote control unit (RCU), generating a corresponding control code from a stored codeset, and transmitting it back to the RCU. Petitioner asserted that while Mishra disclosed wireless transmission, Dubil provided the explicit, well-known modulation techniques (e.g., FSK, PWM) for generating a key code signal on a carrier, as required by the claims. To meet the limitation of identifying a codeset when a user "stops pressing a key," Petitioner relied on Van Ee, which taught an automatic programming method where a user repeatedly presses a function key until the target device responds, at which point the user stops, and the system identifies the last-sent code as correct.
  • Motivation to Combine: A POSITA would combine these references to create a more user-friendly and automated remote control configuration process. Mishra acknowledged the difficulty of manual programming, and Van Ee’s method provided a streamlined solution to that problem. A POSITA would have looked to Dubil to implement the conventional modulation details necessary for the wireless communication in Mishra's system.
  • Expectation of Success: Because both Mishra and Van Ee described set-top boxes communicating wirelessly with remotes, integrating Van Ee's intuitive codeset identification process into Mishra's system would have been a predictable combination of known elements.

Ground 2: Obviousness over Mishra and Dubil - Claims 4 and 7-15 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: This ground targeted the remote control device claims. Petitioner argued that Mishra’s RCU met the limitations of independent claims 4 and 12. Specifically, Mishra's RCU is a single-structure device with a keypad that includes a receiver (for an RF signal from the set-top box) and a transmitter (for an IR signal to the consumer device). The argument asserted that Mishra’s system stored codesets on the set-top box, not the remote, meaning the remote did not store the codeset prior to receiving a key code. As in Ground 1, Dubil was cited to provide the well-known technical details for modulating the key codes onto RF and IR carrier signals. Dependent claims were met by Mishra’s disclosure of using a microcontroller and its set-top box being a type of electronic consumer device.
  • Motivation to Combine: A POSITA implementing the system described in Mishra would naturally consult a reference like Dubil to apply standard, well-known modulation techniques for the required IR and RF communications. This combination was presented as a simple application of conventional technology to a known system.
  • Expectation of Success: Applying the standard modulation protocols from Dubil to enable the wireless links in Mishra’s system was argued to be a straightforward implementation with a high expectation of success.

Ground 3: Obviousness over Caris, Skerlos, and Van Ee - Claims 2 and 3 are obvious over Caris in view of Skerlos and Van Ee.

• Prior Art Relied Upon: Caris (Patent 7,562,128), Skerlos (Patent 4,426,662), and Van Ee (Patent 6,774,813).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented Caris as teaching a system analogous to Mishra's, where a set-top box acts as a key code generator. The set-top box in Caris receives a signal from a remote, queries a database for control codes, and transmits them back to the remote using an "IR or RF transmitter/blaster." Skerlos was cited for providing the foundational details of pulse code modulation (PCM) to transmit control codes wirelessly, fulfilling the claim requirement of modulating a key code onto a carrier signal. Van Ee was used again, as in Ground 1, to teach the "autoscan" feature where a codeset is identified when the user stops pressing a key after a successful command.
  • Motivation to Combine: A POSITA would combine these references to improve the user experience. Caris noted that manual code entry was user-unfriendly. A POSITA would be motivated to incorporate the streamlined, automated codeset identification technique from Van Ee to solve this problem. Skerlos provided the necessary and routine implementation details for the modulation required in Caris's system.
  • Expectation of Success: The combination involved integrating a known setup method (Van Ee) with a known system architecture (Caris) using known transmission techniques (Skerlos), which would predictably result in an improved and functional system.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Lambrechts (to add "learning remote" capabilities) and Yazolino (to provide explicit microcontroller circuitry details) but relied on similar design modification theories.

4. Key Claim Construction Positions

• "key code generator device": Petitioner noted that in parallel litigation, the district court construed this term under 35 U.S.C. §112(6) with the function "generate a key code" and the corresponding structure as a "set-top box, television...or a set-top satellite box and equivalents thereof." This construction was central to mapping the set-top boxes of Mishra and Caris to the claims.
• "means for receiving a key code...and for sending said key code...": Petitioner argued that the corresponding structure for this means-plus-function element in claim 12 is a microcontroller. This position was used to map prior art disclosing standard remote control circuitry to the claim.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 2-5 and 7-15 as unpatentable.