Roku Inc v. Universal Electronics Inc

1. Case Identification

• Case #: IPR2019-01619
• Patent #: 7,782,309
• Filed: September 18, 2019
• Petitioner(s): Roku, Inc.
• Patent Owner(s): Universal Electronics Inc.
• Challenged Claims: 1

2. Patent Overview

• Title: Universal Controlling Device
• Brief Description: The ’309 patent describes a method for using a universal controlling device featuring a display with a touch-sensitive surface. The device is designed to accept two distinct types of user input: a first input type corresponding to the selection of a graphical user interface (GUI) icon (e.g., a button press) and a second input type corresponding to a motion across the surface (e.g., a gesture). The core invention resides in the device’s ability to distinguish between these input types and transmit different corresponding data to one or more remote appliances.

3. Grounds for Unpatentability

Ground 1: Obviousness over Herz and Zetts - Claim 1 is obvious over Herz in view of Zetts.

• Prior Art Relied Upon: Herz (Patent 6,407,779) and Zetts (European Patent Application Publication No. 0536554).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Herz disclosed all elements of claim 1 except for the explicit step of the controlling device itself distinguishing between the two input types, a step Petitioner contends is taught by Zetts. Herz teaches a universal remote control with a touch screen that accepts a "first input type" (pressing emulated GUI buttons like VCR controls) and transmits corresponding command data to an appliance. Herz also teaches a "second input type" (gestures like dragging a Picture-in-Picture window or a volume control dot) and transmits corresponding motion data. The final limitation of claim 1 requires the device to distinguish the first input type from the second. While Petitioner asserted Herz inherently performs this function to operate correctly, it argued that Zetts explicitly addresses this concept. Zetts describes a known problem in touch screen devices: the need to differentiate between inputs intended to emulate mouse commands (e.g., button clicks) and inputs that are gestures. Zetts provides a specific solution: an "Advanced User Interface" (AUI) software module designed to efficiently distinguish between these different input signals to reduce system overhead.
  • Motivation to Combine: A POSITA would combine the teachings of Herz and Zetts to improve the functionality and efficiency of Herz's remote control. Herz presented a system with two distinct input modalities but did not detail an efficient method for processing them. Zetts provided a known software-based technique for solving the exact problem of distinguishing between these types of inputs on an analogous touch screen device. A POSITA would have been motivated to implement Zetts’s efficient AUI software into Herz’s device to reduce processing overhead and improve input handling, which was a predictable improvement.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success. Herz's remote is described as using a "software program" to process inputs, and Zetts's AUI is also a software module. Implementing Zetts's software logic into Herz's system would have been a common and straightforward task for a programmer of ordinary skill at the time, involving the application of a known technique to a similar device to achieve a predictable result.

4. Key Claim Construction Positions

• "universal controlling device": Petitioner argued this term was defined by the patent's specification as "a controlling device capable of commanding the operation of multiple classes of appliances from multiple manufacturers." Petitioner noted its invalidity analysis was applicable under this construction as well as a slightly different construction adopted in a co-pending litigation.
• "second input type indicative of a motion made across the touch-sensitive surface": Petitioner adopted the district court's construction from pending litigation, which defined the term as a "second input type indicative of continuous contact from a first location to a second location on the touch sensitive surface."
• "second data representative of the motion...": Petitioner argued this term should be given its plain and ordinary meaning. It contended that a construction from the pending litigation, which required the data to represent "continuous contact," improperly imported limitations into the claim. However, Petitioner maintained that its obviousness ground, particularly with the teachings of Zetts on tracking continuous touch points, met even this heightened construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) or §325(d). The core argument was that the asserted prior art and invalidity theories were never substantively considered by the USPTO.
• It was argued that Zetts was never before the examiner during original prosecution or the subsequent reexamination.
• Furthermore, while Patent Owner submitted Herz in an Information Disclosure Statement (IDS) during the reexamination, it was filed after the Board had already rendered its decision on appeal. Consequently, the examiner never applied Herz in any rejection or gave any indication of having substantively analyzed its teachings in relation to the challenged claims.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claim 1 of the ’309 patent as unpatentable.