PTAB

IPR2022-00818

Universal Electronics Inc v. Roku Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Setting Up a Remote Control
  • Brief Description: The ’875 patent discloses a method for programming a universal remote control (URC) that aims to simplify setup. The method combines a "Brand-id" search (entering a brand code to iterate through associated device codes) with a "Code-set-id" entry (entering a specific device code directly), allowing a user to utilize either method within a single, unified configuration mode.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 11 over Wouters and Verzulli

  • Legal Basis: Claim 11 is obvious over Wouters in view of Verzulli under 35 U.S.C. §103.
  • Prior Art Relied Upon: Wouters (International Publication No. WO 03/083801) and Verzulli (International Publication No. WO 00/70577).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Wouters teaches a programmable remote control method where a user can test individual keys of a codeset, receive feedback, and replace non-working key functions with codes from other codesets. This process allows for combining codes from multiple presets into a single, new, customized codeset, which maps directly to the core limitations of claim 11. Verzulli was cited to provide the conventional hardware components of a URC (processor, memory, transmitter) that a person of ordinary skill in the art (POSITA) would use to implement Wouters’s method.
    • Motivation to Combine: A POSITA would combine Wouters and Verzulli because both relate to configuring URCs. A POSITA seeking to implement the setup method taught in Wouters would have been motivated to consult a reference like Verzulli for its clear disclosure of the standard hardware required for such a device.
    • Expectation of Success: Combining the software method of Wouters with the standard hardware of Verzulli was presented as a predictable integration of known elements to achieve a known goal.
    • Key Aspects: Petitioner emphasized that the European Patent Office (EPO) had previously rejected a nearly identical counterpart claim over the same Wouters/Verzulli combination, leading the applicant to abandon the claim during European prosecution.

Ground 2: Obviousness of Claims 1-5, 8-10, and 14 over RadioShack and Verzulli

  • Legal Basis: Claims 1-5, 8-10, and 14 are obvious over the RadioShack manual, alone or in view of Verzulli, under §103.
  • Prior Art Relied Upon: RadioShack (Phone Up 4 (15-1917) Manual) and Verzulli (International Publication No. WO 00/70577).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that the RadioShack manual explicitly teaches the key steps of claim 1. It describes a "Setting Up" procedure where a user enters a 4-digit brand code (a "brand-identifier") and then tests sub-codes. It also describes a "Using Device Codes" procedure where a user enters a specific 4-digit device code (a "code-set-identifier"). Petitioner argued these known, alternative setup methods in a single manual teach all elements of claim 1, which simply combines them into a single process flow. Verzulli was again cited as teaching the underlying processor, memory, and transmitter hardware implicitly used by the RadioShack remote.
    • Motivation to Combine: A POSITA would combine the RadioShack manual with Verzulli because both concern the same subject matter. A POSITA would readily implement the programming methods described in the RadioShack manual using the standard hardware block diagram shown in Verzulli.
    • Expectation of Success: A POSITA would have a high expectation of success in implementing the well-known setup procedures from the RadioShack manual using the conventional hardware configuration disclosed by Verzulli.

4. Key Claim Construction Positions

  • "scanning ... through remote control code-sets" (limitation 1[c]) and "iterating ... through the remote control code-sets" (limitation 1[c(1)]): Petitioner argued against Patent Owner’s attempt in a related litigation to narrowly construe these terms to exclude sequential user key presses (e.g., repeatedly pressing a "channel up" button to test codes). Petitioner asserted that the plain and ordinary meaning, supported by the specification, encompasses user-initiated iteration, not just a fully automated, software-only process initiated by a single button press-and-hold action.
  • "the step of testing" (limitation 4[c]): Petitioner contended that Patent Owner improperly attempted to import limitations from claim 1 into dependent claim 4. Specifically, Petitioner argued against Patent Owner’s position that the "testing" step in claim 4 must be followed by the "iterating" step of claim 1. Petitioner asserted that "testing" in claim 4 is a distinct step and should be given its plain meaning without being limited by steps recited only in the independent claim.

5. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation involving the ’875 patent was stayed, meaning the IPR would resolve well before any district court trial. Petitioner also asserted that the merits were exceptionally strong, particularly for Ground 1, given that the EPO had already invalidated a nearly identical claim on the same prior art.
  • §325(d): Petitioner argued that denial under §325(d) would be improper. For Ground 1, although Wouters and Verzulli were in an IDS, Petitioner argued the Examiner materially erred by overlooking their teachings, a fact evidenced by the EPO’s contrary conclusion on patentability. For Ground 2, Petitioner contended that the challenge relies on the RadioShack manual, a reference that was never before the Examiner during prosecution, making the arguments and art substantially new.

6. Relief Requested

  • Petitioner requested the Board institute an inter partes review and cancel claims 1-5, 8-11, and 14 of the ’875 patent as unpatentable.