Roku Inc v. Universal Electronics Inc

1. Case Identification

• Case #: IPR2019-01620
• Patent #: 7,821,505
• Filed: September 18, 2019
• Petitioner(s): Roku, Inc.
• Patent Owner(s): Universal Electronics Inc.
• Challenged Claims: 5-7, 9, 10, 12, 49, and 51

2. Patent Overview

• Title: Universal Controlling Device with Dual Input Types
• Brief Description: The ’505 patent relates to instructions stored on computer-readable media for causing a universal controlling device with a touch-sensitive display to perform certain steps. The device is designed to distinguish between a first input type, indicative of a user selecting a graphical icon, and a second input type, indicative of a user making a motion across the touch-sensitive surface, and to transmit data corresponding to each input type to an external appliance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Herz and Zetts - Claims 5-7, 9, 12, and 51 are 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 teaches a "universal remote control system" with a touch-screen display that accepts two distinct types of user input: a "first input type" (pressing on-screen GUI buttons for functions like "Play") and a "second input type" (making motions or gestures, such as dragging a picture-in-picture window). Petitioner contended that Herz, while disclosing the inputs, does not explicitly teach a method for the device to distinguish between them. Zetts, which addresses touch-screen interfaces, was asserted to supply this missing element by teaching a software-based Advanced User Interface (AUI) that efficiently distinguishes between inputs intended to be mouse commands (e.g., button clicks) and inputs intended to be gestures.
  • Motivation to Combine: A POSITA would combine the teachings of Herz and Zetts to improve the functionality and efficiency of the Herz remote. Zetts is directed at solving the known problem of reducing system overhead associated with handling multiple input types on a single touch surface. A POSITA implementing the Herz device would have recognized this same problem and would have looked to known solutions like the AUI software taught by Zetts to create a more responsive and predictable user experience.
  • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success. The combination involves implementing the known software techniques of Zetts on the hardware platform of Herz. As Herz's remote already included the necessary processor and memory, integrating Zetts’s software-based AUI was a predictable application of a known technique to improve a similar device.

Ground 2: Obviousness over Herz, Zetts, and Finkelstein - Claim 10 is obvious over Herz and Zetts, further in view of Finkelstein.

• Prior Art Relied Upon: Herz (Patent 6,407,779), Zetts (European Patent Application Publication No. 0536554), and Finkelstein (Patent 6,025,841).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claim 10, which requires the motion-based "second data" to comprise data for causing movement of a displayed cursor on the controlled appliance. Petitioner argued the combination of Herz and Zetts teaches the motion input, but Finkelstein teaches the specific use of a cursor for such an operation. Finkelstein discloses methods for managing windows in a GUI, including the use of a cursor to "drag" an object from one location to another.
  • Motivation to Combine: The motivation to add Finkelstein's teachings stems from Herz itself, which suggests its window management features can be performed using "standard window management techniques." A POSITA would have understood this to refer to common methods like those disclosed in Finkelstein, which was assigned to Microsoft and describes its Windows environment. Therefore, a POSITA implementing Herz's dragging feature would naturally incorporate a cursor as taught by Finkelstein.

Ground 3: Obviousness over Herz, Zetts, and Kushiro - Claim 49 is obvious over Herz and Zetts, further in view of Kushiro.

• Prior Art Relied Upon: Herz (Patent 6,407,779), Zetts (European Patent Application Publication No. 0536554), and Kushiro (Patent 6,285,357).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claim 49, which requires the device to initiate playing audio from a speaker in response to a user input. The base combination of Herz and Zetts lacks this feature. Kushiro was asserted to teach a remote control with a "sounding device" (i.e., a speaker) that provides auditory confirmation for user selections, such as reading out the name of a selected appliance.
  • Motivation to Combine: Kushiro explicitly provides the motivation, recognizing that visual interaction with a remote can be difficult in dark environments (like a home theater) or for visually impaired users. A POSITA would combine Kushiro's audio feedback feature with the Herz remote to enhance its accessibility and usability in such common scenarios, which constitutes a known solution to a known problem.

4. Key Claim Construction Positions

• "universal controlling device": Petitioner argued for the patent's explicit lexicography: "a controlling device capable of commanding the operation of multiple classes of appliances from multiple manufacturers."
• "second input type indicative of a motion made across the touch-sensitive surface": Petitioner acknowledged a district court construction of this term as requiring "continuous contact from a first location to a second location on the touch sensitive surface" and asserted its invalidity analysis was consistent with this construction.
• "automatically toggle": Petitioner proposed this term means to "switch over to an alternate state without explicit user interaction." This construction was based on the specification's distinction between user-initiated actions (e.g., button presses) and software-initiated state changes that occur as a consequence of other operations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be inappropriate. The core prior art references, Herz and Zetts, were never substantively considered by the USPTO during prosecution or reexamination. Although Herz was cited in an Information Disclosure Statement (IDS) during reexamination, the IDS was filed after the Examiner had issued the Notice of Intent to Issue Reexamination Certificate, and the Examiner never applied Herz in any rejection. Zetts was never before the Office at all. Petitioner asserted that this lack of prior consideration means the petition raises new arguments based on new art.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 5-7, 9, 10, 12, 49, and 51 of the ’505 patent as unpatentable.