Paper 32
`Trials@uspto.gov
`571-272-7822
`
`Date: June 30, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIVERSAL REMOTE CONTROL, INC.
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00127
`Patent 6,587,067 C1
`____________
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM V. SAINDON, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`I. BACKGROUND
`Petitioner Universal Remote Control, Inc. filed a Petition1 (Paper 6)
`
`(“Pet.”) requesting inter partes review of claims 1-6 (all the claims) of U.S.
`Patent No. 6,587,067 C1 (“the ’067 patent”) under 35 U.S.C. §§ 311-319.
`On July 16, 2013, the Board instituted an inter partes review of claims 1-6
`on three asserted grounds of unpatentability. Paper 13 (“Dec. on Inst.”).
`
`Subsequent to institution, Patent Owner Universal Electronics, Inc.
`filed a Patent Owner Response (Paper 18; “PO Resp.”). Petitioner filed a
`Reply to the Patent Owner Response. Paper 21 (“Pet. Reply”).
`Oral hearing was held on April 8, 2014.2
`
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1-6 of the ’067 patent are
`unpatentable.
`
`
`The ’067 Patent
`The ’067 patent (Ex. 1001)3 describes a universal remote control
`(Fig. 1) comprising a keyboard having pushbuttons, including a macro
`pushbutton, and a library of codes and data for use in transmitting operating
`commands to different home appliances of different manufacturers. Id. at
`Abstract. The macro pushbutton may be programmed to achieve a function
`
`1 We refer to the amended Petition filed February 6, 2013.
`2 The record includes a transcript of the oral hearing. Paper 32.
`3 Petitioner provided a copy of the ex parte Reexamination Certificate (Ex.
`1009 at 1-2).
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`2
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`that normally requires the actuation of several buttons. Id. at col. 14, ll. 14-
`18; Figs. 18A & 18B.
`
`
`
`
`Illustrative Claims
`1. In a universal remote control comprising a keyboard
`having a plurality of pushbuttons including a macro pushbutton
`and a library of codes and data for use in transmitting operating
`commands to a plurality of different home appliances of
`different manufacturers, a readable medium having instructions
`for performing steps comprising:
`
`matching the universal remote control to a plurality of
`different home appliances of different manufacturers such that
`selected codes and data from the library are used to transmit
`operating commands to the matched home appliances in
`response to activation of selected pushbuttons of the keyboard,
`the pushbuttons of the keyboard being activated to directly
`identify each of the plurality of different home appliances of
`different manufacturers to which the universal remote control is
`to be matched; and
`
`assigning to the macro pushbutton a subset of the
`selected codes and data from the library whereafter activation
`of the macro pushbutton causes the universal remote control to
`use the subset of selected codes and data from the library to
`transmit a plurality of operating commands to one or more of
`the matched home appliances.
`
`
`2. The readable medium as recited in claim 1, wherein
`the instructions further perform the step of using activation of
`one or more pushbuttons of the keyboard to assign the subset of
`the selected codes and data from the library to the macro
`pushbutton.
`
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`3
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`Related Proceedings
`The ’067 patent is involved in a U.S. district court proceeding,
`Universal Electronics Inc. v. Universal Remote Control, Inc., No. SACV 12-
`00329 AG (JPRx) (C.D. Cal.), filed on March 2, 2012. Pet. 1. The ’067
`patent was the subject of a prior appeal in an ex parte reexamination
`proceeding that resulted in all claims being confirmed (Certificate Issued
`February 15, 2011). See Ex parte Universal Electronics, Appeal No. 2009-
`011530 (BPAI 2010) (expanded panel) (Ex. 1009).
`
` Asserted Grounds of Unpatentability
`The Board instituted inter partes review on the following asserted
`grounds of unpatentability under 35 U.S.C. § 103(a) (Dec. on Inst. 22):
`I. Claims 1, 3, 4, and 6 over Rumbolt (US 4,774,511) (Ex. 1002) and
`Magnavox4 (Ex. 1006);
`II. Claims 2 and 5 over Rumbolt, Magnavox, and Evans (US
`4,825,200) (Ex. 1004); and
`III. Claims 1-6 over Wozniak (US 4,918,439) (Ex. 1003) and CORE5
`(Ex. 1005).
`
`
`II. ANALYSIS
`
`Claim Construction
`The ’067 patent has expired and thus, as acknowledged by both
`Petitioner and Patent Owner, cannot be amended. For claims of an expired
`
`4 PR Newswire, “Magnavox Unveils Total Remote Tuning System and
`Second Generation Universal Remote Control,” NAP CONSUMER
`ELECTRONICS CORP. (Apr. 1987) (“Magnovox”).
`5 Karr et al., “Core Reference Manual” (1987) (“CORE”).
`4
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`patent, the Board’s claim interpretation is similar to that of a district court.
`See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). “In determining
`the meaning of the disputed claim limitation, we look principally to the
`intrinsic evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en
`banc)). However, there is a “heavy presumption” that a claim term carries
`its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`
`
`
` In the Decision on Institution, the Board noted that Patent Owner
`urged that we adopt claim construction relating to the term “directly
`identify” consistent with the District Court’s construction in the related
`proceeding. With respect to how appliances are identified, the District Court
`construed the ’067 patent’s claim 1 limitation of “pushbuttons of the
`keyboard being activated to directly identify each of the plurality of different
`home appliances of different manufacturers to which the universal remote
`control is to be matched.” The District Court determined that the limitation
`means that: “[p]ushbuttons are pressed to enter codes that directly identify
`each particular home appliance to which the universal remote control is to be
`matched.” Ex. 2001 at 34. Corresponding language in each of claims 3 and
`6 was construed similar to that of claim 1. Ex. 2001 at 26-35. We accept
`Patent Owner’s proffered construction, as set forth by the District Court.
`
`A. “Directly Identify” the Appliances to Which the Universal
`
`
`Remote Control Device Is to be Matched
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`B. “Library of Codes and Data”
`
`As indicated in the Decision on Institution, the phrase “library of
`codes and data” was at issue in the ex parte reexamination of the
`’067 patent, after the patent had expired. Ex. 1009 at 24-26 (Ex parte
`Universal Electronics, slip op. at 14-16). An expanded panel of the Board,
`which included the Chief and two Vice Chief Administrative Patent Judges,
`acknowledged that the Examiner and Patent Owner submitted different
`interpretations for the word “data” in the context of the claims. The
`Examiner construed the term “data” to mean “information even when
`expressed with binary digits.” Ex. 1009 at16. Patent Owner argued a
`narrower construction, where “data” referred to a “pattern of bits,” that is,
`zeros and ones that are to be sent from the universal remote control to the
`appliances. Id. The Board did not select between the competing definitions
`because the applied prior art failed to teach a library of codes and data under
`either interpretation of “data.” Id. With respect to “codes,” the Board, after
`considering the arguments and evidence before it, determined that the term
`referred to transmission schemes for relaying “data” to a controlled
`apparatus. Id. at 14-16.
`For the meaning of “library of codes and data,” Patent Owner refers to
`the declaration statement of its expert (Patrick H. Hayes), as being consistent
`with the claims, specification, and prosecution history of the ’067 patent.
`PO Resp. 15-17. The declaration sets forth that, based on “the totality” of
`the specification of the ’067 patent, one of ordinary skill in the art would
`have understood the phrase “library of codes and data” to refer to a table
`programmed into the remote control, the table comprising a variety of
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`command codes corresponding to particular appliances of different
`manufacturers. Ex. 2006 ¶ 27. We accept Patent Owner’s construction of
`“library of codes and data,” with the understanding that “command codes”
`may include transmission schemes for relaying data.
`
`
`
`Date of Invention
`The ’067 patent’s earliest-claimed date for priority under 35 U.S.C.
`§ 120 is October 14, 1987. Patent Owner alleges, however, that the date of
`invention for the subject matter of claims 1 through 6 is earlier, in the
`“fall/winter of 1986.” PO Resp. 2. Each ground of unpatentability on which
`trial was instituted relies on at least one patent or publication having a
`35 U.S.C. § 102(a) or 102(e) date subsequent to 1986. Specifically,
`Magnavox, Evans, Wozniak, and CORE have effective dates earlier than the
`earliest-claimed § 120 priority date but later than 1986. Patent Owner
`submits, as evidence of prior invention, the declaration of co-inventor
`Richard Ellis (Ex. 2005) and supporting exhibits.
`Rule 131, which governs antedating a reference during patent
`prosecution, by its terms does not apply in an inter partes review. See
`37 C.F.R. § 1.131(a) (One may submit an appropriate oath or declaration to
`establish invention of the subject matter of the rejected claim prior to the
`effective date of the reference when “any claim of an application or a patent
`under reexamination is rejected” over a reference that is not claiming the
`same patentable invention and does not represent a statutory bar (emphasis
`added)). An inter partes review proceeding is not an examination
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`proceeding but is more adjudicative in nature.6 Antedating a reference in the
`context of an inter partes review proceeding is similar to establishing certain
`facts to prove an earlier date of invention in response to a challenge of
`validity.
`
`In the United States, the person who first reduces an
`invention to practice is “prima facie the first and true inventor.”
`Christie v. Seybold, 55 F. 69, 76 (6th Cir.1893) (Taft, J.).
`However, the person “who first conceives, and, in a mental
`sense, first invents . . . may date his patentable invention back
`to the time of its conception, if he connects the conception with
`its reduction to practice by reasonable diligence on his part, so
`that they are substantially one continuous act.” Id. Stated
`otherwise, priority of invention “goes to the first party to reduce
`an invention to practice unless the other party can show that it
`was the first to conceive the invention and that it exercised
`reasonable diligence in later reducing that invention to
`practice.” Price v. Symsek, 988 F.2d 1187, 1190 []
`(Fed.Cir.1993).
`
`Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).
`
`Further, a showing of prior invention requires corroboration.
`
`
`6 See, e.g., Senator Kyl’s statement that:
`In the present bill, section 316(a)(4) gives the Office discretion
`in prescribing regulations governing the new proceeding. The
`Office has made clear that it will use this discretion to convert
`inter partes into an adjudicative proceeding.
`157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011).
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`This court has developed a rule requiring corroboration where a
`party seeks to show conception through the oral testimony of an
`inventor. Price, 988 F.2d at 1195. This requirement arose out
`of a concern that inventors testifying in patent infringement
`cases would be tempted to remember facts favorable to their
`case by the lure of protecting their patent or defeating another’s
`patent.
`
`Mahurkar v. C.R. Bard, Inc., 79 F.3d at 1577.
`
`It has long been the case that an inventor’s allegations of earlier
`invention alone are insufficient -- an alleged date of invention
`must be corroborated. Medichem S.A. v. Rolabo, S.L., 437 F.3d
`1157, 1170 (Fed. Cir. 2006); Woodland Trust v. Flowertree
`Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998).
`“[E]vidence is assigned probative value and collectively
`weighed to determine whether reduction to practice has been
`achieved.” Medichem, 437 F.3d at 1170. “Sufficiency of
`corroboration is determined by using a ‘rule of reason’ analysis,
`under which all pertinent evidence is examined when
`determining the credibility of an inventor’s testimony.” Id.
`
`
`In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011).
`Although Mr. Ellis testifies in his declaration that he, with the help of
`others, “conceived of” a universal remote control in 1986 (Ex. 2005 ¶¶ 6,
`10), Patent Owner does not allege that the inventors were the first to
`conceive the invention and exercised reasonable diligence in reducing that
`invention to practice. See Mahurkar, 79 F.3d at 1577. In particular, Patent
`Owner does not allege, let alone show, there was a period of reasonable
`diligence in reducing the invention to practice following conception of that
`invention. The question of whether Patent Owner has antedated any of
`Magnavox, Evans, Wozniak, and CORE, thus, reduces to the question of
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`whether Patent Owner has demonstrated a reduction to practice before the
`effective dates of the references.
`“To show actual reduction to practice, an inventor must demonstrate
`that the invention is suitable for its intended purpose.” Mahurkar, 79 F.3d at
`1578 (citing Scott v. Finney, 34 F.3d 1058, 1061 (Fed.Cir.1994)). Mr. Ellis
`testifies in his declaration that a “prototype” of a universal remote control
`was “tested” and found “to be working and suitable for its intended
`purpose.” Ex. 2005 ¶ 15. Another “prototype” was “tested” and “found to
`be working and suitable for its intended purpose.” Id. ¶ 17. A “pre-
`production model” was “tested” and found “to be working and suitable for
`its intended purpose.” Id. ¶ 30. The first two “prototypes” and the “pre-
`production model” are alleged to have been made in the fall of 1986, in the
`winter of 1986-87, and in March/April of 1986, respectively, but the
`declaration does not say when the prototypes and model were “tested” and
`found to be suitable for their intended purposes.
`In general, proof of actual reduction to practice requires a showing
`that the apparatus actually existed and worked for its intended purpose
`unless the device is so simple that a mere construction of the device is all
`that is necessary to constitute reduction to practice. See In re Asahi/Am.,
`Inc., 68 F.3d 442, 445 (Fed. Cir. 1995). In Asahi, the Court held that mere
`construction of a restraint coupling was sufficient to demonstrate an actual
`reduction to practice. Id. at 445-47. In this case, the invention of the ’067
`patent is not as simple as a restraint coupling or an electric switch box with a
`lid (see id. at 445-46) such that mere construction demonstrates a reduction
`to practice. The exhibits that Mr. Ellis’ Declaration relies upon to show
`construction of the models are photocopies of casings, circuit diagrams, and
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`printed circuit board artwork. Although the exhibits indeed might tend to
`show that something was constructed, they do not show testing of any of the
`models to verify that any worked for its intended purpose.
`Mr. Ellis also refers to manuals dated February 18, 1987 (Ex. 2005
`¶ 21) and March 8, 1987 (id. ¶ 26) as evidence of reduction to practice. The
`invention, however, continued to be under development during February and
`March of 1987. Declarant testifies that the inventors “began designing” the
`printed circuit board for the device in the “winter and spring of 1987.” Id.
`¶ 29. Mr. Ellis does not allege, directly, that a “working prototype that was
`suitable for its intended purpose” existed prior to design and construction of
`the sample printed circuit boards. Nor does Declarant indicate how a
`“working prototype” (id.) might prove that the yet-to-be-constructed devices
`containing the final printed circuit boards worked for their intended
`purposes. In any event, Declarant does not point to any corroborating
`evidence that a “working prototype” (id.) was constructed prior to the winter
`and spring of 1987. Moreover, Declarant alleges that printed circuit board
`design and development was ongoing at least as late as August 6, 1987. Ex.
`2005 ¶ 46; Decl. Ex. T (copy of printed circuit board artwork).
`Mr. Ellis further refers to assembly language source code (Decl. Ex.
`L, dated Apr. 30, 1987) and alleges that the code shows the remote control
`device was “capable of” performing certain functions. Ex. 2005 ¶¶ 34-36.
`The declaration and supporting exhibits, however, do not allege, let alone
`show, that the source code was compiled and loaded into the electronic
`memory of a remote control device, and that the resulting combination of
`hardware and software was tested and determined to work for its intended
`purpose.
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`We have considered all of Patent Owner’s arguments and evidence
`provided in its Response in support of the effort to antedate references. We
`find insufficient corroboration to demonstrate, by a preponderance of the
`evidence, a reduction to practice prior to the earliest-claimed patent priority
`date of October 14, 1987. Accordingly, references having effective dates
`earlier than October 14, 1987 constitute prior art in this proceeding. None of
`Magnavox, Evans, Wozniak, and CORE has been antedated.
`
`Section 103(a) Patentability
`
`A. Claims 1, 3, 4, and 6 over Rumbolt and Magnavox
`Although Petitioner challenged claims 1-6 over Rumbolt and
`Magnavox, the Board instituted trial on that basis only as to claims 1, 3, 4,
`and 6. Dec. on Inst. 14-16. We noted that Petitioner relies on Magnavox as
`teaching the claim 1 and claim 4 limitations of pushbuttons to directly
`identify each of the plurality of different home appliances of different
`manufacturers to which the universal remote control is to be matched, and
`similar limitations in claims 3 and 6.
`In particular, Magnavox describes:
`While the new 36-button Universal Remote is more
`technologically advanced than its predecessor, the identification
`process has been simplified. Each VCR and cable brand is
`listed in the front of the operating manual with an assigned
`number. For instance, GE is 01, RCA is 03, Zenith is 15. To
`identify a particular VCR, a viewer simply presses the REC
`button on the remote, presses the on/off button on the VCE or
`cable box and enters the appropriate code.
`
`Ex. 1006 at 2.
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`Notwithstanding the fact that Magnavox describes a 36-button
`universal remote whereby the user enters a numeric code to match the
`remote to a particular appliance, Patent Owner advances the theory that the
`codes are not entered by pressing keys on the keyboard. Patent Owner
`submits that it is “just as plausible” that the codes are entered via other
`means such as dual in-line package (DIP) switches or thumb switches. PO
`Resp. 21. Patent Owner does not, however, point to where Magnavox might
`refer to DIP switches, thumb switches, or any other mechanism other than
`the described pushbuttons by which a user might enter numeric codes.
`Patent Owner alleges that Rumbolt and Magnavox describe the same
`or a similar remote, suggesting that “the more reasonable inference” is that
`the manner of code entry in Magnavox is the same as that in Rumbolt; that
`is, Magnavox uses DIP switches in the same manner as described by
`Rumbolt. PO Resp. 21-22. The argument fails to account, however, for
`Magnavox’s disclosure that the 36-button remote is more technologically
`advanced than its predecessor, and that “the identification process has been
`simplified.” Ex. 1006 at 2. The argument also fails to consider the nearly
`two-year allowance for research, development, and improvements between
`the filing of Rumbolt (May 30, 1985) and the publication of Magnavox
`(Apr. 9, 1987).
`Patent Owner argues, further, that replacing the DIP switches used by
`Rumbolt with pushbutton code entry (as taught by Magnavox) would not
`have been obvious because doing so would require a Random Access
`Memory (RAM), such that the code entries would not be preserved in
`memory when batteries were replaced, necessitating re-entry of the codes.
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`PO Resp. 22-24. The argument is premised, however, on the testimony of
`Patent Owner’s expert that:
`If retaining the programming of the remote control during
`battery replacement was an important consideration of the
`remote control in Magnavox, one of ordinary skill in the art
`who was familiar with the Rumbolt patent may have preferred
`such rotary digit switches over pushbuttons to avoid the added
`cost of backup batteries and additional software for enabling
`multi-modal pushbuttons.
`
`Ex. 2006 ¶ 18 (emphasis added). “Yes, and if the court had a brother, he
`might like buttermilk.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
`1375 (Fed. Cir. 2005). In other words, Patent Owner has not established that
`retaining programming of the remote control during battery replacement was
`“an important consideration” in the design of a universal remote control at
`the time of invention, sufficient to discourage the artisan from the design of
`pushbutton entry of appliance codes.7 Mr. Hayes submits that “in the mid
`1980s, one of the key reasons for using DIP switches was to preserve the
`stored identities of appliances when the batteries were removed (to allow
`them to be replaced).” Ex. 2006 ¶ 22. Declarant, however, does not point to
`any evidence in the record in support of the allegation. Such unfounded
`testimony is entitled to little or no weight. 37 C.F.R. § 42.65(a).
`Further, both the allegation that DIP switches were necessary to
`preserve data when batteries were replaced and the suggestion that provision
`
`
`7 Similarly, Declarant submits that if “pressing the ‘REC’ button” in
`Magnavox invokes the setup mode, “it is unclear how a user issues a routine
`‘record’ command request to the VCR without inadvertently switching the
`remote control to setup mode.” Ex. 2006 ¶ 19. The observation is premised
`on the assumption that “REC” refers to a record command, rather than
`another operation (such as receiving entry of the codes).
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`of a battery for preserving remote control codes in memory would have been
`prohibitively expensive (Ex. 2006 ¶ 23) are not supported by the record.
`The ’067 patent does not purport that providing a battery to render RAM
`non-volatile represented an advance over the prior art. On the contrary, the
`patent refers to U.S. Patent No. 4,623,887 (“Welles”; Ex. 3001) and U.S.
`Patent No. 4,626,848 (“Ehlers”; Ex. 3002) as disclosing reconfigurable,
`learning remote control transmitter devices that include scratch pad random
`access memory and “a non-volatile random access memory.” Ex. 1001, col.
`2, ll. 1-9. Welles, for example, discloses scratch pad memory 40 and non-
`volatile RAM 38, which maintains learned code data due to lithium back-up
`battery 45. Ex. 3001, col. 4, ll. 48-58, col. 6, ll. 14-16; Fig. 4d.
`Patent Owner’s expert also submits that combining Rumbolt and
`Magnavox “would require a substantial amount of new software to manage
`and keep track of the current mode of operation, because each keystroke
`must be interpreted in the context of the remote’s current state, rather than
`simply as a fixed function.” Ex. 2006 ¶ 24. Again, however, Declarant does
`not point to any evidence in support of the allegation, or anything else that
`might tend to show a need for substantial additional software. On the
`contrary, it appears there would be only two states for which to account—an
`appliance identification state and a remote control state. Nor does Declarant
`provide an example of additional software coding that might be necessary to
`go beyond, simply, determining that a key entry is for identifying an
`appliance (state 1) or for sending a remote control signal (state 2).
`We are persuaded by a preponderance of the evidence that the subject
`matter of claims 1, 3, 4, and 6 would have been obvious over Rumbolt and
`Magnavox.
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`B. Claims 2 and 5 over Rumbolt, Magnavox, and Evans
`
`Claim 2 of the ’067 patent further limits the subject matter of claim 1
`by requiring the use of one or more pushbuttons to assign the subset of the
`selected codes and data from the library to the macro pushbutton. Claim 5
`recites similar limitations.
`Evans teaches a macro function, and that such a “program sequence is
`learned or stored in the controller by setting run/learn switch 40 [Fig. 1] to
`its learn position” (Ex. 1004, col. 8, ll. 20-22). Evans further teaches storing
`infrared codes and data in RAM 112, which are stored in a “learning
`remote” protocol whereby the codes and data are captured from the source
`infrared controller device (e.g., a TV controller). Id. at col. 6, ll. 8-68. A
`sequence of infrared codes and data, perhaps from different devices, may be
`stored in a “programming sequence.” Id. at col. 7, l. 61 - col. 9, l. 8. During
`normal use, the program (or function) sequences stored in RAM 112 are
`retrieved and the proper infrared signals are generated when the macro
`function is selected by operation of keys on the universal remote. See, e.g.,
`id. at col. 11, ll. 45-52; col. 12, ll. 15-24; see also id. at col. 7, ll. 17-29.
`Patent Owner submits, however, that because Evans teaches a
`“learning remote,” the reference does not teach a “library of codes and data.”
`PO Resp. 28. Patent Owner does not explain how Evans might fail to teach
`a table programmed into the remote control, comprising a variety of
`command codes corresponding to particular appliances of different
`manufacturers. See id. at 15. The only hint as to why Patent Owner might
`argue Evans fails to do so is the reference by Mr. Hayes to a “pre-existing
`library.” Ex. 2006 ¶ 30. Claims 2 and 5, however, do not contain the word
`
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`“pre-existing,” or any other temporal indicator as to when the codes and data
`are entered into memory. Nor is it clear at what point codes and data may be
`considered “pre-existing.” Patent Owner, thus, appears to advance the view
`that the claims somehow distinguish over command codes that have been
`stored in a “learning remote” mode. Claims 2 and 5, however, place no
`limitation on how or when the command codes are programmed.
`Nor does the ’067 patent support Patent Owner’s position. The patent
`refers to Welles and Ehlers as disclosing reconfigurable remote control
`devices that have the ability to “learn, store and repeat remote control codes
`from any other infrared transmitter.” Ex. 1001, col. 2, ll. 1-14. The
`transmission schemes that Welles may store are depicted in Figure 1 of
`Welles. Figure 1 of Ehlers is identical to Figure 1 of Welles. Figure 11 of
`the ’067 patent is identical to Figure 1 of Welles and Figure 1 of Ehlers.
`“The infrared codes to be learned include a wide range of different codes for
`operating different electrical apparatus manufactured by the same or
`different manufacturers. In FIG. 11, which is identical to FIG. 1 in U.S. Pat.
`No. 4,623,887 [Welles], there are illustrated several modulation schemes for
`infrared codes.” Ex. 1001, col. 9, ll. 14-19 (emphasis added). This “code
`data” may also “be obtained from vendor information sheets and
`specifications. . . .” Id. at col. 9, ll. 41-44 (emphasis added). The codes and
`data taught by Welles, Ehlers, and the ’067 patent are no different from that
`taught by Evans. Evans discloses:
`[P]rogrammable reconfigurable remote control
`transmitters have been developed which, when in a learning
`mode, are adapted to receive the infrared coded signals
`transmitted by two or more remote transmitters and to store
`compacted representations of these coded signals. Once the
`transmitter has been programmed, it may be utilized as a
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`universal controller for the products it has been programmed to
`operate. One such reconfigurable remote control transmitter is
`described in U.S. Pat. No. 4,626,848 entitled “Programmable
`Functions for Reconfigurable Remote Control” issued to
`Raymond G. Ehlers on Dec. 2, 1986 [Ehlers].
`
`Ex. 1004, col. 1, ll. 31-42. Evans’s advance over the prior art was not in
`providing command codes different from the prior art, but in the addition of
`a macro function to overcome the requirement of selecting multiple keys in
`sequence for performing common functions such as turning on a cable box,
`turning on a television, and selecting a cable input channel on the television.
`Id. at col. 1, l. 43 - col. 2, l. 7.
`Thus, when a universal remote control transmitter retrieves stored
`command codes from memory to control particular appliances (as in Evans),
`it does not matter how or when the codes were entered into the memory.
`Patent Owner has not established that the when or the how of storing the
`command codes in memory makes any difference in the steps recited in, for
`example, claim 2 (and base claim 1).8 The claims are not limited to first
`deciphering the infrared codes and then using a computer to store the codes
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`8 Patent Owner’s representative at the oral hearing argued that a “learning”
`remote stores only a “waveform,” as opposed to decoding the waveform and
`storing data to reproduce the appropriate command codes. Hearing
`Transcript 21:15 - 22:2. We do not find the argument in Patent Owner’s
`Response. We do not consider arguments advanced for the first time at a
`trial hearing because to do otherwise would be prejudicial to the other party
`(or parties). In any event, Welles demonstrates that in a learning remote
`command codes are received, decoded, may be compressed, and when
`reproduced the operation “requires that the transmitter recall, expand and
`transmit the required code.” Ex. 3001, col. 1, ll. 1-9; col. 6, ll. 14-16, 35-38;
`col. 8, ll. 37-40; Fig. 8 (tabular representation of the compressed learned
`code).
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`and data into remote controller memory (Ex. 1001, col. 8, ll. 33-45). If the
`command codes differed depending on how or when they were stored in
`memory, a television might turn off when receiving the signal from a remote
`controller having computer-programmed memory but not when receiving the
`(same) signal from a remote controller having learning-remote programmed
`memory, or vice versa. But the television turns off, regardless, upon
`reception of the power-off signal.
`We are persuaded by a preponderance of the evidence that the subject
`matter of claims 2 and 5 would have been obvious over Rumbolt,
`Magnavox, and Evans.
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`C. Claims 1-6 over Wozniak and CORE
`
`The Board instituted trial as to the obviousness of claims 1-6 over
`Wozniak and CORE. Dec. on Inst. 18-20. CORE indicates that the CORE
`controller provides the user with pre-stored commands for some remote
`controllers. For operation of the pre