PTAB

IPR2019-01621

Roku Inc v. Universal Electronics Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Universal Controlling Device
  • Brief Description: The ’504 patent describes a universal remote control with a touch-sensitive surface. The device is capable of distinguishing between two types of user input: a "static touch" (e.g., pressing a graphical button) to control one function, and a "moving touch" (e.g., a gesture or drag) to control a different function.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 1 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 Herz disclosed a universal remote control system with a touch screen that accepts both static touches (for pressing on-screen buttons like “Play”) and moving touches (for dragging a picture-in-picture window). While Herz recognized these different inputs, Petitioner contended it lacked an explicit teaching for how the device distinguishes between them. Zetts allegedly supplied this missing element by teaching a method and apparatus, specifically an Advanced User Interface (AUI) software module, for efficiently distinguishing between input signals intended to be mouse commands (static touches) and those intended to be gestures (moving touches).
    • Motivation to Combine: A POSITA would combine Zetts with Herz to improve the performance of Herz's device. Zetts explicitly addresses reducing system overhead and wasted processing time associated with differentiating various input types on a touch screen. Applying Zetts's efficient software solution to Herz’s remote control would have been a predictable improvement for a known problem.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Herz’s remote is described as using a software program for its functionality. Implementing Zetts’s AUI software would be a straightforward software modification on Herz’s hardware, a common task for a person of ordinary skill.

Ground 2: Obviousness of Claim 5 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 builds upon the combination of Herz and Zetts to address claim 5, which adds the limitation that the data from the moving touch is used for "commanding movement of a displayed cursor." Petitioner asserted that the base system of Herz/Zetts provides a remote that distinguishes static and moving inputs. Finkelstein, which relates to managing windows in a GUI, was introduced to explicitly teach using a cursor for drag-and-drop operations to move or resize on-screen objects. This directly maps to the functionality described in Herz of moving a picture-in-picture (PIP) window.
    • Motivation to Combine: The motivation to add Finkelstein’s teachings was strong because Herz itself suggests using "standard window management techniques" to implement its PIP repositioning feature. Finkelstein, assigned to Microsoft, discloses precisely those standard techniques, including using a displayed cursor to drag windows. A POSITA implementing the PIP feature in Herz would have been motivated to consult a reference like Finkelstein to employ a conventional, cursor-based method.
    • Expectation of Success: Success would be expected because implementing Finkelstein's cursor-based window management is a well-known technique that aligns directly with the functionality already present in Herz. It would simplify implementation and provide a familiar user experience.

4. Key Claim Construction Positions

  • "universal controlling device": Petitioner noted the patent acts as its own lexicographer, defining this term as "a controlling device capable of commanding the operation of multiple classes of appliances from multiple manufacturers." Petitioner argued its analysis applies to this definition as well as a slightly broader construction adopted in a district court litigation.
  • "second input type indicative of a moving touch...": Petitioner argued that while it preferred the plain and ordinary meaning, its obviousness arguments were consistent with the district court's construction of this term as a "second input type indicative of continuous contact from a first location to a second location on the touch sensitive surface." Petitioner contended that Zetts explicitly teaches the mechanics of tracking such continuous contact.
  • "second data being representative of the moving touch...": Petitioner argued this term should be given its plain and ordinary meaning and that no special construction is necessary. It asserted that to the extent a more specific construction is adopted, the prior art combination (particularly with Zetts) discloses the required limitations.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d) because the core prior art had not been substantively considered by the Patent Office.
  • Herz: While disclosed in an Information Disclosure Statement (IDS) during a prior reexamination, it was submitted after the Board had already decided on the merits of that proceeding and was never applied in any rejection.
  • Zetts: This reference was never before the Patent Office during any examination or reexamination.
  • Petitioner contended that the combination of Herz and Zetts directly addresses the specific limitations that the Examiner previously found to be missing from the prior art of record, making the new grounds particularly strong and worthy of consideration.

6. Relief Requested

  • Petitioner requests institution of an inter partes review of claims 1 and 5 of the ’504 patent and cancellation of those claims as unpatentable.