PTAB

IPR2019-01614

Roku Inc v. Universal Electronics Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Relaying Key Code Signals Through a Remote Control Device
  • Brief Description: The ’325 patent describes a system to address memory limitations in remote controls. The system uses an intermediary "key code generator device" (e.g., a set-top box) which receives a simple signal from a remote, generates the corresponding complex key code, and transmits that key code to control an electronic consumer device.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 3, 5, and 7 are obvious over Rye in view of Skerlos.

  • Prior Art Relied Upon: Rye (Application # 2004/0080428) and Skerlos (Patent 4,426,662).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rye discloses the core architecture of the ’325 patent. Rye teaches a "smart" RF/IR transceiver (the "first device") that receives a function control RF signal (a "keystroke indicator") from a remote control (the "third device"). The transceiver then looks up a corresponding key code from an internal library and transmits it as a binary coded infrared (IR) signal to an audiovisual component (the "second device"). Petitioner asserted Rye's transceiver meets the claim limitations of a receiver, transmitter, processing device, and memory. Rye further discloses that the generated key codes control functions like "increase volume."
    • Motivation to Combine (for §103 grounds): Petitioner contended that while Rye teaches the overall system, it does not explicitly describe the low-level details of modulating the key code onto an IR carrier signal for transmission. A POSITA implementing Rye’s system would combine it with Skerlos, a reference that describes well-known pulse-code modulation (PCM) techniques for reliably transmitting control codes via IR. Skerlos was presented as a known solution for providing the specific formatting and timing information needed to implement Rye's IR transmission.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because both references operate in the same field of IR remote controls. Petitioner argued that implementing Skerlos's standard modulation scheme in Rye’s system is a predictable combination of known elements to yield a functional and reliable IR transmitter.

Ground 2: Claims 1, 2, 3, 4, and 5 are obvious over Caris in view of Dubil.

  • Prior Art Relied Upon: Caris (Patent 7,562,128) and Dubil (Patent 8,132,105).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Caris discloses a set-top box (STB) (the "first device") that receives an IR or RF signal from a remote control (the "third device"). In response, the STB connects to a server, downloads control codes for a target consumer device (the "second device"), and stores them in a look-up table. The STB then uses this table to transmit the appropriate control code to the second device. Petitioner asserted this system teaches generating a key code based on a keystroke indicator. Caris also discloses that the STB can connect to the second device via a wired or wireless link, teaching limitations of dependent claims 4 and 5.
    • Motivation to Combine (for §103 grounds): Petitioner argued that Caris describes the high-level system but lacks specifics on how the key codes are formatted for transmission. A POSITA would combine Caris with Dubil, which explicitly details formatting key codes for transmission from an STB. Dubil describes parameters such as carrier frequency, duty cycle, protocol type (e.g., FSK, PWM), and the bit pattern of command codes—all key aspects of the "formatting" and "timing information" limitations of the ’325 patent claims.
    • Expectation of Success (for §103 grounds): Implementing Dubil’s techniques in Caris’s system would be a natural extension, as both describe STBs transmitting key codes to control consumer devices. A POSITA would predictably apply Dubil's detailed, known transmission protocols to the system in Caris to achieve a fully operational device.

4. Key Claim Construction Positions

  • "Key code" and "Keystroke indicator": Petitioner noted that the parties agreed in a parallel district court case to construe "key code" as "a code corresponding to the function of an electronic device, optionally including timing information" and "keystroke indicator" as "a signal, distinct from a key code, corresponding to a pressed key [on a remote control]."
  • "Key code signal": The district court construed this term as "a signal containing a modulated key code." Petitioner argued that its invalidity grounds render the challenged claims obvious under either the court's construction or the Patent Owner's proposed construction ("a signal containing a key code").

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-5 and 7 of the ’325 patent as unpatentable under 35 U.S.C. §103.