PTAB

IPR2021-00263

Roku Inc v. Universal Electronics Inc

Key Events

Petition

petition

Title: System and Method for Programming a Universal Remote Control
Brief Description: The ’317 patent discloses a system for programming a universal remote control. The system is designed to simplify configuration by using a controlled device, such as a set-top box, to display interactive setup instructions and prompts on an associated display device, like a television, to guide the user.

Prior Art Relied Upon: Lee (Patent 9,792,133).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Lee disclosed all limitations of claims 1-10. Lee's "remote control communicating circuit," which can be housed in a set-top box, was presented as analogous to the claimed "controlled device." This circuit executes an "interactive, step-by-step user guide" that is displayed on a television to assist a consumer in programming a remote control. Petitioner contended that Lee’s guide, which prompts the user to select the type, brand, and model of a target device, met the claim limitations of automatically progressing through setup steps and displaying instructional information. User selections made via the remote were argued to be the "plurality of communications" that cause the system to advance, and Lee’s system selects a corresponding command code set from a library.
- Motivation to Combine (for §103 grounds): Not applicable (single-reference ground).
- Expectation of Success (for §103 grounds): Not applicable (single-reference ground).

Prior Art Relied Upon: Lee (Patent 9,792,133) and Spilo (Patent 7,375,673).
Core Argument for this Ground:
- Prior Art Mapping: This ground challenged claim 11, which adds a "transceiver coupled to the processing device for receiving the executable instructions from a remote server for storage in the memory." Petitioner asserted that Lee’s disclosure of a system connecting to a "central database" via a telephone or cable network to receive updated code sets inherently taught a transceiver. To the extent Lee did not explicitly disclose receiving executable instructions (i.e., software updates) from the server, Spilo was argued to supply this teaching.
- Motivation to Combine (for §103 grounds): A POSITA would combine Spilo’s well-known remote software updating feature with Lee's system to enhance its value and prevent obsolescence. Spilo explicitly taught a controller that connects to an update server to download software updates, and a POSITA would have found it obvious to apply this known technique to improve the similar system in Lee by allowing the user guide software to be updated remotely.
- Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have a reasonable expectation of success, as the modification amounted to implementing a known solution for a predictable purpose: keeping software and data current.

Prior Art Relied Upon: Martis (Application # 2005/0110651).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Martis's "set-top computer system" was an analogous "controlled device" that used setup software to display a configuration menu on a television. The system prompts a user to input a target device's type, brand, and model using a remote control unit (RCU). In response to each user input received via the RCU, the system automatically progresses through setup screens. Once the selections are complete, the system determines the required "remote control codes" from a database. Petitioner contended this process met all limitations of the independent claims. For claim 11, Martis’s disclosure of connecting to the internet to download "additional information" and "commands" was argued to teach a transceiver for receiving executable instructions from a remote server.
- Motivation to Combine (for §103 grounds): Not applicable (single-reference ground).
- Expectation of Success (for §103 grounds): Not applicable (single-reference ground).
Additional Grounds: Petitioner asserted that claim 5 is obvious over Martis in view of TiVo, arguing TiVo supplied a teaching of displaying a numeric code for manual entry. Petitioner also asserted that claim 11 is obvious over Martis in view of Spilo, relying on a similar software update motivation as presented in the Lee and Spilo combination.

Petitioner argued that the Board should not exercise discretionary denial under Fintiv based on a co-pending ITC litigation.
The primary arguments were that the ITC proceeding and the IPR petition were not substantially similar. Petitioner noted that a parallel district court case was stayed. The ITC invalidity contentions were based on anticipation under 35 U.S.C. §102, whereas the IPR grounds were for obviousness under §103.
Furthermore, the petition introduced a new prior art reference, Spilo, which was not part of the ITC case. Therefore, the ITC decision would not resolve all patentability disputes between the parties. Petitioner contended these differences, combined with the strong merits of the petition, weighed in favor of institution.

Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’317 patent as unpatentable.