PTAB

IPR2021-00261

Roku Inc v. Universal Electronics Inc

Key Events

Petition

petition

Title: System and Method for Simplified Setup of a Universal Remote Control
Brief Description: The ’514 patent relates to a system for simplifying the setup of a universal remote control. It discloses using a controllable appliance, such as a set-top box, to display interactive instructions on a television, guiding a user to select a device type and brand to retrieve the correct programming code.

Prior Art Relied Upon: Seidel (Patent 7,671,758) and Caris (Patent 7,562,128).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Seidel disclosed the core of the claimed invention: a system where a set-top box displays instructional prompts and setup codes on a television to program a remote control. The user selects an appliance brand from a displayed list to narrow the search for the correct code. Petitioner argued that while Seidel taught the overall process, it did not explicitly disclose how the setup mode was initiated. Caris was alleged to supply this missing element, as it taught initiating a remote control setup process by pressing a dedicated button on the remote.
- Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Caris's dedicated setup button with Seidel’s system. This combination would provide a simple, efficient, and well-known method for initiating the setup process that Seidel described, thereby furthering Seidel's stated goal of minimizing user frustration.
- Expectation of Success: A POSITA would have had a high expectation of success because both references described similar components (e.g., set-top boxes, programmable remotes) performing analogous functions, making the integration of a dedicated button into Seidel's system predictable.

Prior Art Relied Upon: Seidel (Patent 7,671,758), Caris (Patent 7,562,128), and O’Donnell (Patent 6,650,248).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the combination of Seidel and Caris to address the "echoing" limitations of claim 18. Petitioner argued that O'Donnell taught a remote control setup system that provided visual feedback on a display. Specifically, O'Donnell described displaying a confirmation message, such as "You have selected a Sony brand VCR," after the user pressed a key. This functionality was argued to be the claimed "echoing" of a key press by displaying a representation of it on a display device.
- Motivation to Combine: A POSITA would have been motivated to add O'Donnell's echoing feature to the Seidel/Caris combination as a user-friendly improvement. Providing visual verification of user inputs was a known technique to improve accuracy, help users rectify mistaken key presses, and make the programming process easier, which are all predictable enhancements consistent with the goals of the primary references.
- Expectation of Success: Incorporating a visual feedback mechanism into a menu-driven setup process was a routine design choice with predictable results.

Prior Art Relied Upon: Lee (Patent 9,792,133).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Lee, by itself, rendered the claims obvious. Lee described an "interactive, step-by-step user guide" for programming a remote control, which was stored on and executed by a set-top box. This guide displayed a sequence of navigable menus on a television, prompting the user to select the type, brand, and model of the device to be controlled. Upon user selection, Lee's system provided a setup code. Petitioner argued this single reference taught the claimed method of providing interactive instructions, receiving user input via the remote, accessing instruction data (the code set), and displaying it for the user. Lee also disclosed that the process is initiated by pressing a "setup" key on the remote control.
- Key Aspects: Petitioner presented Lee as a comprehensive prior art system that disclosed nearly all claimed elements in a single, integrated design, including the use of a series of navigable menus for device selection and the ability to query a remote "central database" for codes not stored locally.
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Lee with Seidel, Caris, or O'Donnell to address specific dependent claim limitations not covered by the primary grounds.

Petitioner argued that the Board should not issue a discretionary denial under Fintiv. The petition asserted that a co-pending district court litigation had been stayed. It further argued that a parallel International Trade Commission (ITC) proceeding was not a basis for denial because it involved different claims and issues (claims 18-19 were not asserted in the ITC, and claim 20 was terminated from that proceeding). Petitioner also contended the ITC case was not in an advanced state and that instituting the inter partes review (IPR) would be efficient and not duplicative.

Petitioner requests institution of IPR and cancellation of claims 1-6 and 18-20 of the ’514 patent as unpatentable.