PTAB

IPR2021-00264

Roku Inc v. Universal Electronics Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Manually Setting Up and Configuring a Universal Remote Control
  • Brief Description: The ’317 patent discloses a system for simplifying the setup of a universal remote control. The system involves a controlled device (e.g., a set-top box) that displays interactive prompts on a television, guiding a user to select the type and brand of a target device to be controlled, and then provides the appropriate command code set for configuration.

3. Grounds for Unpatentability

Ground 1: Obviousness over Seidel in view of Caris - Claims 1-11 are obvious over Seidel in view of Caris.

  • Prior Art Relied Upon: Seidel (Patent 7,671,758) and Caris (Patent 7,562,128).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Seidel discloses the core elements of the claimed invention, including a set-top control unit that displays instructions on a TV to help a user program a remote control. Seidel’s system prompts the user to select the brand of the device to be controlled to narrow the search for a correct "mode code." However, Seidel does not explicitly teach prompting for the device type. Petitioner asserted that Caris remedies this deficiency by disclosing a remote control setup system that guides a user to provide information including both the brand and type of the target device. The combination of Seidel's guided on-screen setup with Caris's inclusion of a device-type selection step allegedly renders the "plurality of setup procedure steps" of independent claim 1 obvious. Dependent claims were argued to be obvious as they recite well-known features like set-top boxes, infrared codes, and menu navigation, all of which are disclosed or suggested by the combination.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Seidel and Caris to improve the user experience and efficiency of the setup process. Petitioner contended that incorporating Caris's teaching of filtering by device type into Seidel’s system, which already filters by brand, is a logical step to further narrow the search for potential command codes. This would directly further Seidel's stated goals of improving the accuracy and simplicity of the setup process and reducing user frustration.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. The integration would involve adding a known user interface step (selecting a device type) to an existing guided setup process to achieve the predictable result of a more refined search for command codes.

Ground 2: Obviousness over Seidel, Caris, and Foster - Claim 6 is obvious over Seidel in view of Caris and Foster.

  • Prior Art Relied Upon: Seidel (Patent 7,671,758), Caris (Patent 7,562,128), and Foster (Patent 6,211,870).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically targets claim 6, which adds the limitation of causing the controlled device to exit the setup procedure in response to a communication from the controlling device. Petitioner argued that while the Seidel-Caris combination teaches the setup process, it may not explicitly disclose an exit function. Foster was introduced to supply this missing element. Foster describes a remote control programming "learning wizard" with a graphical user interface that explicitly includes a "Cancel" button to exit the configuration process.
    • Motivation to Combine: Petitioner asserted that providing a user with a way to cancel or exit a multi-step software process is a fundamental and self-evident aspect of user interface design. A POSITA implementing the Seidel-Caris setup procedure would have been motivated to include an exit mechanism, as taught by Foster, to give the user greater control and to handle cases of user error. This modification would further Seidel’s goal of minimizing user frustration during the setup process.
    • Expectation of Success: A POSITA would have recognized that implementing a cancel button is a routine modification. Adding this standard feature to the user interface of the combined Seidel-Caris system would be a simple task with a high expectation of success, yielding the predictable result of an improved and more user-friendly setup wizard.

4. Key Claim Construction Positions

  • Petitioner argued that while no explicit constructions were necessary, its grounds satisfy the construction for "display a key input activation sequence" (claim 5) adopted in a co-pending ITC litigation: "display, for inputting, a sequence of keys to be pressed." Petitioner contended that the "mode code" displayed in Seidel, which is a short sequence of digits the user must enter, meets this construction.

5. Arguments Regarding Discretionary Denial

  • Petitioner presented substantial arguments that discretionary denial under Fintiv would be inappropriate despite a co-pending ITC litigation. The core arguments were:
    • The parallel district court litigation was stayed pending the ITC determination, weighing against denial.
    • The IPR petition raises substantively different issues and prior art combinations (Seidel/Caris) than those in the ITC proceeding, meaning the ITC decision would not resolve the patentability questions presented in the IPR.
    • The ITC proceeding was not in an advanced state, as expert reports were only recently exchanged, and the hearing had not yet occurred.
  • Petitioner also argued that denial under Becton Dickinson factors was unwarranted because the key prior art references relied upon in the petition (Seidel and Caris) were never considered or applied by the Examiner during the original prosecution of the ’317 patent.

6. Relief Requested

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