Paper No. 13
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: July 16, 2013
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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 SCOTT R.
`BOALICK, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`I. BACKGROUND
`Universal Remote Control, Inc. (Petitioner) requests inter partes review of
`
`claims 1-6 (all the claims) of US Patent 6,587,067 C1 under 35 U.S.C. §§ 311 et
`seq. Paper No. 6; “Pet.” 1 Universal Electronics, Inc. (Patent Owner) submitted a
`preliminary response under 37 C.F.R. § 42.107(b) on April 30, 2013. Paper No.
`12; “Prelim. Resp.” We have jurisdiction under 35 U.S.C. § 314.
`For the reasons that follow, we institute an inter partes review of claims 1-6
`
`of the '067 patent.
`
`A. The Challenged Patent
`The '067 patent (Ex. 1001)2 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. Abstract. The macro pushbutton may
`be programmed to achieve a function that normally requires the actuation of
`several buttons. '067 patent col. 14, l. 14 et seq.; Figs. 18A - 18B.
`
`
`B. 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:
`
`
`
`1 We herein refer to the amended Petition filed February 6, 2013; Paper No. 6.
`
` Petitioner has provided a copy of the ex parte Reexamination Certificate (Ex.
`1009 at 1-2).
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`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.
`
`C. Related Proceedings
`The '067 patent is involved in litigation styled Universal Electronics Inc., v.
`Universal Remote Control, Inc., Case No. SACV 12-00329 AG (JPRx) (C.D. Cal.),
`filed on March 2, 2012. Pet. 1. The instant challenger has filed petitions for inter
`partes review against two other patents involved in the litigation: US 5,614,906
`(IPR2013-00152); and US 5,414,426 (IPR2013-00168). 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 Feb. 15, 2011). See Ex parte
`Universal Electronics, Inc., Appeal No. 2009-011530 (BPAI 2010) (expanded
`panel) (Ex. 1009).
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability under 35 U.S.C.
`§ 103(a):
`I. Claims 1-6 over Rumbolt (US 4,774,511) (Ex. 1002) and Magnovox3 (Ex.
`1006);
`II. Claims 1, 2, 4, and 5 over Rumbolt , Magnavox, and Evans (US
`4,825,200) (Ex. 1004);
`III. Claims 1-6 over Wozniak (US 4,918,439) (Ex. 1003) and CORE4 (Ex.
`1005); and
`IV. Claims 1-6 over Rumbolt '359 (US 4,703,359) (Ex. 1011) and CORE.
`Pet. 6.
`
`
`II. ANALYSIS
`
`“Judicial Economy”
`Patent Owner submits that the Board should deny the petition “in the interest
`of judicial economy” because the patent has expired and, thus, cannot be amended
`and because the patent is already being litigated in the related U.S. District Court
`action. Prelim. Resp. 26.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides:
`
`THRESHOLD -- The Director may not authorize an inter partes review to be
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`instituted unless the Director determines that the information presented in
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`the petition filed under section 311 and any response filed under section 313
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`3 PR Newswire, “Magnavox unveils Total Remote Tuning System and second
`generation Universal Remote Control,” NAP Consumer Electronics Corp. (Apr.
`1987).
`
` 4
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` Karr et al., “Core Reference Manual” (1987).
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`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.
`
`The threshold for instituting an inter partes review, defined by statute, does
`not include consideration as to whether the patent can be amended, or whether the
`patent is being litigated in a District Court action. As the statutory threshold has
`been met here, we decline to deny the petition on the basis proposed by Patent
`Owner.
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`Claim Construction
`The '067 patent has expired and, thus, as noted by both Petitioner and Patent
`Owner, cannot be amended. Our reviewing court recently acknowledged that the
`USPTO applies a different standard of claim interpretation for expired patents.
`While claims are generally given their broadest possible scope during
`prosecution, In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000), the
`Board’s review of the claims of an expired patent is similar to that of a
`district court’s review, Ex Parte Papst-Motoren, 1 U.S.P.Q.2d 1655,
`1655-56 (B.P.A.I. Dec. 23, 1986); see also MPEP § 2258 I.G
`(directing Examiners to construe claims pursuant to Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), during
`reexamination of an expired patent).
`
`In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
`In Ex parte Papst-Motoren, 1 USPQ2d 1655 (BPAI 1986), an expanded
`panel of the Board that included the PTO Commissioner, Deputy Commissioner,
`and Board Chairman held that:
`[I]n reexamination proceedings in which the PTO is considering the
`patentability of claims of an expired patent which are not subject to
`amendment, a policy of liberal claim construction may properly and
`should be applied. Such a policy favors a construction of a patent
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`claim that will render it valid, i.e., a narrow construction, over a broad
`construction that would render it invalid.
`
`1 USPQ2d at 1656 (citations omitted).
`The Papst-Motoren language with regard to the construction of a patent
`claim “that will render it valid” can be misleading. The maxim that claims are
`construed, if possible, to sustain their validity is limited “to cases in which ‘the
`court concludes, after applying all the available tools of claim construction, that the
`claim is still ambiguous.’” Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir.
`2005) (en banc) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911
`(Fed. Cir. 2004)). “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, 415 F.3d at 1312-17). 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).
`Petitioner does not indicate that any claim terms are to be construed
`differently from their ordinary and customary meaning. See Pet. 7. Patent Owner,
`however, urges that we should adopt the claim construction for certain language
`and terms in the '067 patent as construed by the Court in the related District Court
`proceeding.
`I. District Court Construction
`
`
` In relation to how appliances are identified, the Court construed the 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 Court determined that the
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`limitation means that: “Pushbuttons are pressed to enter codes that directly identify
`each particular home appliance to which the universal remote control is to be
`matched.” Prelim. Resp. 4-5. Corresponding language in each of claims 3 and 6
`was construed similar to that of claim 1. Id. at 5-6; see also Ex. 2001 at 26-35.
`For purposes of this decision we will adopt Patent Owner’s proffered construction,
`as set forth by the District Court.
`II. Using Pushbuttons “To Assign” the Subset
`
`
`Patent Owner does not proffer a construction for using pushbuttons “to
`assign” the subset of the selected codes and data from the library to the macro
`pushbutton, as recited in dependent claims 2 and 5. The transitive verb “assign”
`may be defined as “[t]o set apart for a particular purpose; designate: assigned a day
`for the inspection.” The American Heritage® Dictionary of the English Language
`2007. The definition is consistent with the description in the '067 patent of
`assigning multiple actions to a single button, or programming a macro function to a
`button by the use of “DO” commands. '067 patent, e.g., col. 17, ll. 17-67. We
`conclude that using pushbuttons “to assign” the subset as claimed to the macro
`pushbutton is to be interpreted in accordance with its ordinary and customary
`meaning; i.e., pushbuttons are used to designate or set apart the macro pushbutton
`as being associated with the subset of the selected codes and data from the library.
`
`“Date of Invention”
`Applicants filed on February 23, 2001 the U.S. application that matured into
`the '607 patent. Pursuant to 35 U.S.C. § 120, the patent claims priority to
`applications dating back to an earliest filing date of October 14, 1987. Although
`the '067 patent purports that five of the six earlier-filed applications constitute a
`“continuation-in-part” of an earlier application, Petitioner does not allege that the
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`effective filing date of any of patent claims 1 to 6 is later than the earliest claim to
`priority of October 14, 1987.
`Each asserted ground relies on at least one patent or publication having a 35
`U.S.C. § 102(a) or 102(e) date subsequent to February 16, 1987; namely,
`Magnavox, Evans, Wozniak, and CORE have effective dates later than February
`16, 1987. Patent Owner submits, however, that the “date of invention” is February
`16, 1987. Prelim. Resp. 2. If the Preliminary Response were to establish that the
`inventions(s) of claims 1 through 6 was (or were) completed by the alleged date of
`invention, each of Petitioner’s asserted grounds of unpatentability would fail.
`As evidence of prior invention, Patent Owner refers to a declaration and
`exhibits filed under 37 C.F.R. § 1.131 (“Rule 131”) in Application Serial No.
`07/586,957 -- the “great, great grandparent application to the '067 patent.” Prelim.
`Resp. 2; Ex. 2002.
`Patent Owner does not tell us whether the Rule 131 declaration and evidence
`were deemed by the Examiner as effective to antedate prior art that was applied in
`Application 07/586,957. More importantly, the Declaration fails to relate '067
`patent claims 1 through 6 to the invention that is alleged to be earlier in time.
`According to USPTO records, the '957 application was abandoned in a file wrapper
`continuation (FWC) in favor of Application 08/093,512, which was later
`abandoned for failure to respond to an Office Action. The '067 patent does not
`claim priority to Application 08/093,512, but purports to be “related to” an
`application that includes a priority claim to Application 08/093,512. '067 patent
`col. 1, ll. 24-37. Patent Owner has not shown how the evidence in the form of a
`Declaration, or the manuals that accompany it, filed in another case with
`presumably different claims, is relevant to the claimed subject matter before us.
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`In any event, Rule 131, 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)). A
`Rule 131 showing is appropriate and expressly provided for in the context of
`examination proceedings. An inter partes review proceeding, in contrast, is not an
`examination proceeding but is more adjudicative in nature.5 Therefore, antedating
`a reference in the context of an inter partes review proceeding would be similar to
`establishing certain facts to prove an earlier date of invention in response to a
`challenge of validity.
`
`
`5 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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`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, 26 USPQ2d 1031,
`1033 (Fed.Cir.1993).
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`Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).
`
`Moreover, a showing of prior invention requires corroboration.
`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 at1577.
`
`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).
`
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`In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011).
`As evidence of the alleged date of invention (Feb. 16, 1987), Patent Owner
`refers to three exhibits that were attached to the Darbee Declaration, which purport
`to be versions of a manual for a universal remote control, respectively dated
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`February 16, 1987, March 8, 1987, and June 8, 1987. Prelim. Resp. 2-4; Ex 2002.
`Neither the evidence nor the Preliminary Response directly addresses claims 1
`through 6 (the claimed invention(s)) of the '067 patent. Moreover, even though the
`February 16, 1987 manual version was submitted to show conception of some
`invention as of that date, the document does not appear to demonstrate conception.
`“To have conceived of an invention, an inventor must have formed in his or her
`mind ‘a definite and permanent idea of the complete and operative invention, as it
`is hereafter to be applied in practice.’” Mahurkar v. C.R. Bard, Inc., 79 F.3d at
`1577 (citation omitted). Cf. Ex. 2002 at 16 (“Digits entered will probably reflect
`the ‘search result’ playback sequence, i.e. a trinary number sequence” (emphasis
`added)).
`Nor has Patent Owner shown how the manuals are evidence of a prior
`reduction to practice of any of claims 1-6 of the '067 patent. The manuals, without
`more, do not show a reduction to practice of an invention. “To show actual
`reduction to practice, an inventor must demonstrate that the invention is suitable
`for its intended purpose.” Mahurkar v. C.R. Bard, Inc., 79 F.3d at 1578 (citing
`Scott v. Finney, 34 F.3d 1058, 1061 (Fed.Cir.1994)). Neither the Darbee
`Declaration nor the Preliminary Response points to any evidence and alleges that a
`universal remote control corresponding to the claimed invention(s) of the '067
`patent was tested and determined to work as intended.
`Finally, the Patent Owner has not shown how the Declaration and the three
`manual versions show due diligence in reducing an invention to practice. “Where
`a party is first to conceive but second to reduce to practice, that party must
`demonstrate reasonable diligence toward reduction to practice from a date just
`prior to the other party’s conception to its reduction to practice.” Mahurkar v. C.R.
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`Bard, Inc., 79 F.3d at 1578 (citing Griffith v. Kanamaru, 816 F.2d 624, 625-26
`(Fed.Cir.1987)).
`Thus, Patent Owner has not met its burden of persuasion in establishing that
`the date of invention is February 16, 1987, or any date prior to the earliest claimed
`priority date of the '067 patent.
`
`Section 102(a) Date of CORE
`Patent Owner also submits that CORE is not prior art because there is no
`evidence of its availability prior to the earliest-claimed priority date (Oct. 14,
`1987) of the '067 patent. Prelim. Resp. 15-17.
`The CORE reference manual bears a copyright date of 1987. Patent Owner
`cites a Board decision that found a publication having a copyright date of 1998
`available as prior art as of December 31, 1998. See Ex parte Test.com, Appeal No.
`2009-010023, 2010 WL 2802525, at *3 (BPAI 2010). However, the availability
`date of the publication was an express finding of fact, as opposed to a
`pronouncement of law that in all cases a publication is presumed to be available no
`earlier than the last day of its year of copyright notice.
`In this case, Petitioner has provided evidence that CORE constitutes a
`publication under 35 U.S.C. § 102(a) at least as early as September 1, 1987. A
`magazine published September 28, 1987 reports in an article (“Whiter Woz”; Ex.
`1007) that the singular CORE electronic device, including a 100-page user manual,
`was shipped to customers on September 1. The CORE reference manual of record
`(Ex. 1005) is about 99 pages in length, depending on how the pages are counted,
`and can thus fairly be considered a “100-page user manual.” Further, the manual
`does not appear to have a revision number or any other designation to suggest it
`was not the first publicly available reference manual for the CORE product. We
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`find it unlikely that CORE represents a later version of the reference manual that
`shipped September 1, even if, however unlikely, a second or later version of the
`manual was provided to customers in the last quarter of 1987, after the earliest
`priority date of the '067 patent (Oct. 14, 1987).
`In view of the foregoing, we find that Petitioner has provided evidence
`sufficient to demonstrate, prima facie, that CORE constitutes prior art as of a date
`earlier than the earliest priority date of the '067 patent, and is thus prior art under
`§ 102(a) vis-à-vis the patent.
`
`Representative Claims
`Claims 1, 3, 4, and 6 are independent. Claims 1 and 4 have similar
`limitations, although claim 1 is drawn to “a readable medium” and claim 4 to “a
`method.” Claims 3 and 6 have similar limitations, with claim 3 drawn to “a
`readable medium” and claim 6 to “a method.” Claims 3 and 6 are broader than
`claims 1 and 4 in that claims 3 and 6 do not contain limitations directed to the
`macro pushbutton. However, because we consider claim 1 as representative of all
`the independent claims, we will consider the more comprehensive limitations of
`claim 1 in addressing each asserted ground of unpatentability.
`Claim 2 depends from claim 1. Claim 5 depends from claim 4. As the
`dependent claims recite similar limitations, we consider claim 2 as representative
`of the dependent claims.
`Thus, for purposes of this decision we will address claim 1 as representative
`of claims 1, 3, 4, and 6. We will address claim 2 as representative of claims 2 and
`5.
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`Claims 1-6 -- Obviousness over Rumbolt and Magnovox
`Patent Owner submits that the USPTO considered Rumbolt, a continuation-
`in-part of Rumbolt (namely, Rumbolt '359), and Magnavox during prosecution of
`the '067 patent, and that the Board should give deference to the earlier
`determination of allowability over the references. Prelim. Resp. 7-8.
`Applicants cited Rumbolt and Rumbolt '359 during prosecution of the '067
`patent in an Information Disclosure Statement. Ex. 1008 at 64. The Examiner
`rejected claims over the combination of Rumbolt '359 and CORE. Ex. 1008 at 25-
`26. Patent Owner admits that no claims were rejected over the combination of
`Rumbolt and Magnavox. Prelim. Resp. 7.
`Under 35 U.S.C. § 325(d), “[i]n determining whether to institute or order a
`proceeding under . . . chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially the same prior art or
`arguments previously were presented to the Office” (emphasis added). The
`permissive language of the statute indicates that we are not required to consider
`whether the same or substantially the same prior art or arguments previously were
`presented to the Office. In any event, in this case Patent Owner has not
`demonstrated that all the issues presented by the combination of Rumbolt and
`Magnavox previously have been considered by the Office. Patent Owner has not
`shown, for example, that the teachings of Magnavox are merely cumulative with
`respect to the teachings of CORE.
`Turning to Rumbolt, that patent describes a universal remote control unit in which
`the user identifies the appliances to be controlled by adjusting dip switches.
`Rumbolt col. 3, ll. 5-40; Fig. 1. Petitioner contends that Rumbolt describes or
`teaches all the subject matter of claim 1 of the '607 patent, except Rumbolt uses
`DIP switches instead of pushbuttons directly to identify each of the plurality of
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`appliances to which the remote control is to be matched. Petitioner turns to
`Magnavox as teaching the use of keyboard pushbuttons for a similar matching
`process, and submits that it would have been obvious to substitute the pushbutton
`identification entry of Magnavox for Rumbolt’s DIP switch entry.
`Patent Owner responds that Magnavox does not disclose how the user enters
`the appropriate code, whether using DIP switches, pushbuttons, or some other
`means. Prelim. Resp. 9-10. We disagree with Patent Owner (id.) that Magnavox’s
`“entire description” of how the remote control is programmed falls within a single,
`four-sentence paragraph.
`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.
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`
`Magnavox 2.
`An understanding of the identification process requires consideration of the
`entire reference for proper context. The reference does not mention DIP switches,
`or any other means by which a user may enter the numeric codes into the universal
`remote, other than by using pushbuttons of the “36-button” Universal Remote. We
`therefore are not persuaded that Magnavox is deficient in its teachings.
`Claim 2 requires 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. Petitioner submits that Rumbolt teaches such a feature of
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`assigning codes and data from the library to a macro pushbutton in its description
`of “chain commands.” Pet. 26.
`However, Rumbolt describes “chain commands” as the macro function
`itself, rather than the assigning of codes and data to a particular key (i.e., the
`programming of the macro function). See, e.g., Rumbolt col. 6, ll. 8-12 (“chain
`commands, i.e., an automatic command sequence initiated for [sic] depression of a
`single button”). As Patent Owner notes, the chain commands represent a
`“permanent association” of an operation command of one appliance with a related
`operation command of another, such as what signals may be sent to an associated
`television set when a VCR “play” command is selected. Id. at col 1, l. 61 - col. 2,
`l. 2.
`
`Petitioner seems to acknowledge that the “chain commands” of Rumbolt
`represent no more than the macro function itself. See Pet. 25-26 (“chain
`commands, i.e. an automatic command sequence initiated [from] depression of a
`single button”). Petitioner thus may imply that “assigning” should be construed as
`something different from its ordinary and customary meaning. But see Pet. 7 (no
`indication that claim terms are to be interpreted different from their ordinary and
`customary meaning). However, Petitioner has provided insufficient evidence or
`reasoning to show that using pushbuttons “to assign” the subset of the selected
`codes and data from the library to the macro pushbutton should extend to
`activation of the macro pushbutton to perform the assigned multiple functions.
`
`Claims 1, 2, 4, and 5 -- Obviousness over Rumbolt, Magnavox, and Evans
`With respect to claim 1, Petitioner adds Evans to the combination of
`Rumbolt and Magnavox as “further evidence regarding the obviousness of a macro
`pushbutton, by teaching a program key (e.g. “macro pushbuttons”). Ex. 1004 at
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`col. 8, l. 17.” Pet. 34. Petitioner further refers to column 8, lines 17 through 21 of
`Evans. Id.
`We consider the referenced teachings of Evans to be merely cumulative with
`respect to claim 1. As discussed in relation to the asserted obviousness of claim 1
`over Rumbolt and Magnavox, Rumbolt already teaches a macro pushbutton (e.g.,
`col. 6, ll. 8-12).
`With respect to the claim 2 requirement of using one or more pushbuttons to
`assign the subset of the selected codes and data from the library to the macro
`pushbutton, Petitioner contends that Evans teaches such a feature at column 8,
`lines “16-12” [sic] and column 7, line 63. Pet. 38.
`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” (col. 8, ll. 20-22). Patent Owner argues that “[b]ecause Evans discloses a
`purely learning remote control that does not include any library of codes and data,
`it follows that the pushbuttons of the Evans remote cannot be used to assign a
`subset of selected codes and data from a library to a macro pushbutton.” Prelim.
`Resp. 14.
`However, Patent Owner does not explain why Evans is thought not to
`include a “library of codes and data.”6 Evans teaches storing infrared codes and
`data in RAM 112, which are stored, as Patent Owner indicates, in a “learning
`remote” protocol whereby the codes and data are captured from the source infrared
`controller device (e.g., a TV controller). Evans col. 6, ll. 8-68. A sequence of
`infrared codes and data, perhaps from different devices, may be stored in a
`
`6 For discussion of what constitutes a “library of codes and data” in the context of
`the '067 patent, see the decision in the ex parte reexamination appeal, Ex parte
`Universal Electronics, Inc., Appeal No. 2009-011530, slip op. at 14-16 (Ex. 1009
`at 24-26).
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`“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 id., e.g., col. 11, ll. 45-52; col. 12, ll. 15-24. See
`also col. 7, ll. 17-29.
`As base claim 1 recites, a subset of the selected codes and data from the
`library is assigned to the macro pushbutton. Dependent claim 2 specifies that
`activation of one or more pushbuttons of the keyboard is used to assign the subset
`of the selected codes and data from the library to the macro pushbutton. In Evans,
`that subset of the library of codes and data stored in RAM 112, which is associated
`with the macro pushbutton is assigned to that pushbutton in a process that includes
`activation of pushbuttons on the keyboard. Evans col. 8, l. 16 - col. 9, l. 2; Fig. 1,
`preset or “macro” key 46.
`We are, therefore, not persuaded that Evans fails to remedy the deficiencies
`of Rumbolt and Magnavox in the rejection of dependent claim 2.
`
`Claims 1-6 -- Obviousness over Wozniak and CORE
`Petitioner submits that Wozniak and CORE describe the same device, with
`Wozniak providing a detailed technical description and CORE providing
`information related to use and configuration of commercial embodiments of the
`programmable universal remote control. Pet. 39.
`Patent Owner submits that Wozniak and CORE expressly were considered
`during prosecution of the '067 patent, and that CORE was “expressly cited” in a
`rejection. Prelim. Resp. 14. Patent Owner has not, however, shown that all the
`issues presented by the combination of Wozniak and CORE previously have been
`considered by the Office.
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`In response to the teachings of Wozniak and CORE taken together, Patent
`Owner argues that the remote control of CORE is incapable of being matched to a
`plurality of different home appliances of different manufacturers, and therefore,
`incapable of using codes entered through its pushbuttons to directly identify each
`of a plurality of different home appliances. Prelim. Resp. 20. Patent Owner’s
`argument that the remote control, as described by CORE, is incapable of being
`matched to “a plurality of” different appliances is based on the way that the CORE
`remote controller allows the user to control different appliances such as a TV and
`VCR. Id. at 20-21.
`The CORE manual indicates that the CORE controller provides the user with
`pre-stored commands for some remote controllers. For opera