`
`
`Petition for Inter Partes Review under
`35 U.S.C. §§ 311–319
`and 37 C.F.R. § 42.100 et seq.
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`In re Patent of: Dresti et al.
`Patent No.: 7,831,930
`Filed: Nov. 6, 2002
`Issued: Nov. 9, 2010
`Assignee: Universal Electronics Inc.
`Title: SYSTEM AND METHOD FOR
`DISPLAYING A USER INTERFACE
`FOR A REMOTE CONTROL
`APPLICATION
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,831,930
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ............................................................................................ iv
`
`I. MANDATORY NOTICES ................................................................. 1
`A.
`Real Party-In-Interest ......................................................... 1
`B.
`Related Matters .................................................................... 1
`C.
`Lead and Back-Up Counsel ................................................ 2
`D.
`Service Information ............................................................. 3
`
`II.
`
`PAYMENT OF FEES ......................................................................... 3
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW ..................... 4
`A.
`Grounds For Standing ......................................................... 4
`B.
`Identification of Challenge .................................................. 4
`1. Claims for which inter partes review is requested ............. 4
`2. The specific art and statutory grounds on which the
`challenge is based ................................................................. 4
`3. How the challenged claims are to be construed ................ 6
`4. How the construed claims are unpatentable under the
`statutory grounds identified in 37 C.F.R. § 42.104(b)(2) . 6
`5. Supporting evidence relied upon to support the
`challenge ................................................................................ 6
`
`IV. SUMMARY OF THE '930 PATENT ................................................ 7
`A.
`Summary of the Prosecution History of the '930
`patent ..................................................................................... 9
`
`V. DETAILED CLAIM CONSTRUCTION ....................................... 10
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE '930 PATENT IS UNPATENTABLE ..... 12
`A.
`Claim 1 is obvious over Realistic in view of Evans ......... 12
`B.
`Claim 1 is obvious over ProntoEdit in view of
`Realistic ............................................................................... 14
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ................................................. 15
`A.
`Summary of Prior Art ....................................................... 15
`1. Realistic Universal Remote Control Owner’s Manual
`Cat. No. 15-1903 (Realistic - Exhibit 1003) .................... 15
`2. U.S. Patent No. 4,825,200 (“Evans,” Exhibit 1004) ........ 17
`3. ProntoEdit User Guide (“ProntoEdit,” Exhibit 1005) .. 19
`Detailed Grounds for Unpatentability Arguments ......... 21
`1. Ground 1: Claim 1 is unpatentable as obvious over
`Realistic in view of Evans under 35 U.S.C. § 103(a). ...... 21
`1. Ground 2: Claim 1 is unpatentable as obvious over
`ProntoEdit in view of Realistic under 35 U.S.C. § 103(a).
` .............................................................................................. 28
`
`B.
`
`VIII. CONCLUSION .................................................................................. 33
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`EXHIBIT LIST
`
`1001.
`
`U.S. Patent No. 7,831,930 (filed Nov. 6, 2002) (issued Nov. 9, 2010)
`
`to Dresti et al.
`
`1002.
`
`Prosecution history of U.S. Patent Application Serial No. 10/288,727,
`
`which matured into the '930 Patent.
`
`1003.
`
`Realistic Universal Remote Control Owner’s Manual Cat. No. 15-
`
`1903
`
`1004.
`
`U.S. Patent No. 4,825,200 (filed Jun. 25, 1987) (issued Apr. 25, 1989)
`
`1005.
`
`1006.
`
`1007.
`
`to Evans et al.
`
`ProntoEdit User Guide Version 2.0
`
`Pronto Universal Intelligent Remote Control User Guide
`
`RemoteCentral.com web page
`
`http://files.remotecentral.com/view/3492-7441-
`
`1/aaron_hugharts_pronto_setup.html#comments
`
`1008.
`
`Declaration of Jim Geier In Support of the Petition for Inter Partes
`
`Review of U.S. Patent No. 7,831,930 (“Geier Declaration”).
`
`1009.
`
`Complaint for Patent Infringement in Universal Electronics, Inc. v.
`
`Universal Remote Control Inc., Civil Action No. SACV 13-00984,
`
`filed June 28, 2013 (“Current UEI Litigation”).
`
`- iv -
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`1010.
`
`Complaint for Patent Infringement in Universal Electronics Inc. v.
`
`Peel Technologies, Inc., Civil Action No. SACV 13-01484, filed
`
`September 23, 2013 (“Peel Litigation”).
`
`1011.
`
`Joint Claim Construction Chart Pursuant to S.P.R. 3.5.1 in Universal
`
`Electronics Inc. v. Peel Technologies, Inc., Civil Action No. SACV
`
`13-01484, filed June 13, 2104 (“UEI/Peel Claim Construction Chart”)
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`Petitioner Universal Remote Control, Inc. (“Petitioner” or “URC”)
`
`respectfully requests inter partes review of claim 1 of U.S. Patent No. 7,831,930
`
`(the “'930 Patent,” attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311–319
`
`and 37 C.F.R. § 42.100 et seq.
`
`I. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following
`
`mandatory disclosures.
`
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Universal Remote
`
`Control, Inc. is the real party-in-interest.
`
`B. Related Matters
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that claim 1 of the '930
`
`Patent is involved in the litigation presently styled Universal Electronics Inc., v.
`
`Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and Ohsung
`
`Electronics U.S.A., Inc., Case No. SACV 13-00984 AG (JPRx) (C.D. Cal.), filed
`
`on June 28, 2013 ("2013 UEI Litigation"). Petitioner was the sole defendant in the
`
`2013 UEI Litigation on July 2, 2013 and, consequently, the only defendant served
`
`with a complaint in the 2013 UEI Litigation on July 2, 2013. The 2013 UEI
`
`Litigation remains pending. The patents-in-suit are U.S. Patent Nos. 5,228,077,
`
`
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`- 1 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`5,255,313, 5,414,761, 5,552,917, RE39,059, 6,407,779, 7,831,930, 7,126,468,
`
`7,589,642, and 8,243,207.
`
`Claim 1 of the ‘930 Patent has also been asserted in another litigation styled
`
`Universal Electronics Inc., v. Peel Technologies, Inc., Case No. SACV 13-01484
`
`AG (JPRx) (C.D. Cal.) filed September 23, 2013 (“the Peel Litigation”). See Ex.
`
`1010. This litigation is currently pending. Petitioner has not been served with a
`
`complaint of infringement in the Peel litigation and is not a defendant in the Peel
`
`litigation.
`
`This Petition for inter partes review is directed to U.S. Patent No. 7,831,930.
`
`Petitions for inter partes review corresponding to the remaining nine patents in the
`
`2013 UEI Litigation will also soon be filed. In light of this, the Patent Trial and
`
`Appeal Board (PTAB) may wish to consolidate one or more of any other inter
`
`partes review actions related to this matter to a single panel of Administrative
`
`Patent Judges for administrative efficiency.
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel:
`
`
`
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`Lead Counsel
`Douglas A. Miro
`Ostrolenk Faber LLP
`1180 Avenue of the Americas New
`York, NY 10036
`Telephone: (212) 596-0500
`Facsimile: (212) 382-0888
`
`dmiro@ostrolenk.com
`USPTO Customer No. 02352
`USPTO Reg. No. 31,643
`
`Back-Up Counsel
`Peter H. Kang, Reg. No. 40,350
`Theodore W. Chandler, Reg. No. 50,319
`Ferenc Pazmandi, Reg. No. 66,216
`Sidley Austin LLP
`1001 Page Mill Rd.
`Building One
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (65) 565-7100
`pkang@sidley.com
`USPTO Customer No. 37803
`
`
`
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`II.
`
`PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge to Deposit Account No. 15-
`
`0700 $9,000 for the request fee required by 37 C.F.R. § 42.15(a)(1) and $14,000
`
`for the Post-Institution fee required by 37 C.F.R § 42.15(a)(2) for this Petition for
`
`Inter Parties Review. Review of 1 claim is being requested, so no excess claims
`
`fee is included in this fee calculation. The undersigned further authorizes payment
`
`for any additional fees that might be due in connection with this Petition to be
`
`charged to the above referenced Deposit Account.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the '930 Patent is satisfied.
`
`A. Grounds For Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the '930
`
`Patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from petitioning for inter partes review of the '930 Patent on the grounds
`
`identified herein.
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
`
`is that the PTAB cancel as unpatentable claim 1 of the '930 Patent.
`
`1.
`
`Claims for which inter partes review is requested
`
`Pursuant to 37 C.F.R. § 42.104(b)(1), Petitioner requests inter partes review
`
`of claim 1 of the '930 Patent.
`
`2. The specific art and statutory grounds on which the
`challenge is based
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '930 Patent
`
`is requested in view of the following references, each of which is prior art to claim
`
`1 of the '930 Patent under one or more of 35 U.S.C. § 102(a), (b), and/or (e):
`
`
`
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`(1) Realistic Universal Remote Control Owner’s Manual Cat. No. 15-
`
`1903 (Realistic) was published in 1989 by Tandy Corporation. Realistic is prior
`
`art to the ‘930 patent at least under 35 U.S.C. § 102(b).
`
`(2) U.S. Patent No. 4,825,200 was filed Jun. 25, 1987, and issued on
`
`April 25, 1989, to Evans et al. (Evans). Evans is prior art to the ‘930 patent at least
`
`under 35 U.S.C. § 102(b).
`
`(3)
`
`ProntoEdit User Guide Version 2.0 was published in September,
`
`2000, by Philips Electronics N.V. (ProntoEdit). ProntoEdit is prior art to the ‘930
`
`patent at least under 35 U.S.C. § 102(b).
`
`The Realistic, Evans, and ProntoEdit references were not considered during
`
`prosecution of the ‘930 patent. Realistic, Evans, and ProntoEdit present new, non-
`
`cumulative technological teachings. A detailed discussion of the references and
`
`their applicability to claim 1 of the '930 patent is provided starting at Section VII
`
`(B) below.
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '930 Patent
`
`is requested on the following grounds.
`
`Ground 1. Claim 1 is unpatentable as obvious over Realistic in view of
`
`Evans under 35 U.S.C. § 103(a).
`
`Ground 2. Claim 1 is unpatentable as obvious over ProntoEdit in view of
`
`Realistic under 35 U.S.C. § 103(a).
`
`
`
`
`
`
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`3. How the challenged claims are to be construed
`
`The ‘930 patent has not expired. Pursuant to 37 C.F.R. § 42.100(b), the
`
`claims of an unexpired patent subject to inter partes review receive the “broadest
`
`reasonable construction in light of the specification of the patent in which [they]
`
`appear.” Claim 1 of the ‘930 patent does not include means-plus-function or step-
`
`plus-function limitations.
`
`4. How the construed claims are unpatentable under the
`statutory grounds identified in 37 C.F.R. § 42.104(b)(2)
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how claim 1 of the
`
`‘930 patent is unpatentable under the statutory grounds identified above, including
`
`an identification of where each element is found in the prior art patents or printed
`
`publications, is provided in Section VII.B below.
`
`5.
`
`Supporting evidence relied upon to support the challenge
`
`Pursuant to 37 C.F.R. § 42.104(b)(5), the exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided in an exhibit list
`
`included herein. The following text of the present Petition identifies the relevance
`
`of the evidence to the challenges raised and identifies specific portions of the
`
`evidence to support the challenges raised under the grounds of unpatentability.
`
`Further supporting evidence, including detailed discussions of the respective prior
`
`art references, is provided in the Geier Declaration (Ex. 1008).
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`IV. SUMMARY OF THE '930 PATENT
`
`The ‘930 patent is directed to a “hand-held electronic device having a
`
`remote control application user interface that functions to displays operational
`
`mode information to a user. The graphical user interface may be used, for
`
`example, to setup the remote control application to control appliances for one or
`
`more users in one or more rooms, to perform activities, and to access favorites.”
`
`See Ex. 1001 at Abstract. “The user may be able to specify a list of favorite
`
`channels for a number of categories. The favorites lists may be synchronized with
`
`the channel lineup offered by a cable or satellite service provider.” Id. at 12:14-18.
`
`“The remote control application may provide one or more favorites pages
`
`containing button icons which the user may configure for direct access to his
`
`favorite programming (e.g., example, to cause the transmissions of commands to
`
`cause a device to tune to a favorite channel), favorite device, etc. … An exemplary
`
`favorites page is illustrated in FIG. 17a.” Id. at 19:25-45.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`
`
`The ‘930 patent further explains that “[i]t will also be appreciated that
`
`favorites pages may be specific to particular devices (e.g. a satellite STB or a CD
`
`jukebox) while in other instances favorites pages may span multiple devices in
`
`order to allow access to all of a user's favorite media content from a single point of
`
`access.” Id. at 19:40-45.
`
`Independent claim 1 of the ‘930 patent is directed to software for a handheld
`
`device to allow multiple lists of favorite channels to be defined and accepting input
`
`to place the hand held device into a mode to control a home appliance and, in
`
`response, using that input to select the list of favorite channels associated with that
`
`home appliance. See Ex. 1001 at 38:27-47; see also Ex. 1008 at ¶ 24.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`A.
`
`Summary of the Prosecution History of the '930 patent
`
`The application for the ‘930 patent was filed on November 6, 2002, claiming
`
`priority to two provisional applications filed in November and December of 2001.
`
`The ‘930 patent names Universal Electronics Inc. (UEI) as assignee and Dresti et
`
`al. as inventors. See Ex. 1001 at p. 1.
`
`Original claims 1-73 were subject to a restriction requirement. Ex. 1002 at
`
`p. 382. The applicants selection included original claim 33 directed to user
`
`specific favorite lists and original claim 35 directed to appliance specific favorite
`
`lists. Id. at 389.
`
`The Examiner rejected the selected claims as unpatentable over the prior art,
`
`including the Williams ‘988 patent which disclosed user specific favorite channels.
`
`Id. at 402. The applicants amended the claims to require displaying the favorite
`
`channels on the remote control and clarifying that the claimed “mode” is
`
`associated with a home appliance. Id. at 424.
`
`The Examiner rejected the amended claims over the Allport ‘019 reference
`
`alone or in combination with the Williams ‘988 reference. Id. at 461. In response,
`
`the applicants amended the claims again to require embedded instructions and
`
`canceled claims directed to user specific favorite channels. Id. at 479. The
`
`applicants also argued that the claims require the mode selection input to select the
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`favorite channel, and that mode is different from the Allport reference, in which
`
`the favorite channels are selected based on user identity. Id. at pp. 483-484.
`
`After the Examiner rejected the claims again, the applicants appealed and
`
`argued that, in the claims, the mode (the target device) selection selects the
`
`favorites list, and the Examiner failed to find a motivation to modify Allport’s user
`
`based selection. Id. at 514. In particular, applicants argued in their Appeal Brief
`
`that the same input has to be used for mode and favorite list selection:
`
`Id. at 519.
`
`After the appeal process, the Board agreed with the applicants, and the ‘930
`
`
`
`patent issued on Nov. 9, 2010.
`
`V. DETAILED CLAIM CONSTRUCTION
`
`A. Construction of Terms
`
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`Claims in the presently requested inter partes review proceeding are to be
`
`construed in accordance with the broadest reasonable construction in light of the
`
`specification of the ‘930 patent in accordance with 37 C.F.R. §42.100(b). Unless
`
`otherwise indicated, the terms of the ‘930 patent are used in their ordinary and
`
`customary sense as one skilled in the relevant field would understand them under
`
`the broadest reasonable interpretation standard. Further, Petitioner reserves all
`
`rights, as it is entitled under applicable law, to assert the same or different claim
`
`constructions for the ‘930 patent under the different standards and different
`
`applicable court procedures in the pending 2013 UEI Litigation.
`
`B. Construction of the Term “accepting input into the hand held
`device that specifies to the hand held device that the hand held
`device is to placed into a mode to control at least one of a plurality
`of home appliances and, in response, using the input to select at
`least one of the plurality of lists of favorite channels”
`
`The ‘930 claim term “accepting input into the hand held device that specifies
`
`to the hand held device that the hand held device is to placed into a mode to control
`
`at least one of a plurality of home appliances and, in response, using the input to
`
`select at least one of the plurality of lists of favorite channels” refers to the hand
`
`held device receiving user input which puts it in a mode to control a specific home
`
`appliance and, in response to the same user input, the hand held device selects one
`
`of the favorite channel lists. Ex. 1008 at ¶ 25-27. This interpretation is also
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`consistent with the arguments made by the applicants during prosecution. See §
`
`IV, above.
`
`In the co-pending Peel Litigation mentioned above, Patent Owner has agreed
`
`to a construction of the phrase “in response, using the input to select at least one of
`
`the plurality of lists of favorite channels” to mean “the mode specifying input
`
`automatically selects at least one of the favorite channel lists.” Ex. 1011 at p. 2.
`
`Regardless of whether UEI’s proposed agreed construction is deemed to be
`
`consistent with the broadest reasonable construction in accordance 37 C.F.R.
`
`§42.100(b) (and without any admission by Petitioner that such constructions are or
`
`are not correct), in this inter partes review proceeding, Patent Owner should not be
`
`allowed to assert a claim construction for the ‘930 patent which is any narrower
`
`than its proposed constructions in the Peel Litigation.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE '930 PATENT IS UNPATENTABLE
`
`Petitioner provides a number of prior art patents and publications
`
`demonstrating unpatentability of claim 1 the ‘930 patent. The grounds of
`
`invalidity set forth below explain how numerous disclosures in the prior art teach
`
`expressly or inherently the limitations of claim 1 of the ‘930 patent.
`
`A. Claim 1 is obvious over Realistic in view of Evans
`
`Realistic is a user manual published by Tandy Corporation in 1989 for a
`
`universal remote control with an LCD display. Ex. 1003 at pp. 1-3 and 5. With
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`the Realistic remote, the user can control eight devices (TV, VCR1, VCR2,
`
`CABLE, RVCR, CD, SAT, and AUX). Id. at p. 8. The user can select the desired
`
`device by pressing the SELECT key and a corresponding device indicator appears
`
`on the display. Id. The Realistic remote has a favorite channel feature that allows
`
`the user to “specify up to 32 favorite-channels for each of the eight devices the
`
`URC can command.” Id. at p. 36. The specified “favorite-channel list” can be
`
`reviewed on the display of the remote by using the SCROLL keys. Id. at pp. 37-
`
`38. Realistic teaches that when the user presses the SELECT keys to change
`
`devices, the “favorite channel list becomes active for any device that you select.”
`
`Id. at p. 39. Thus, Realistic teaches that the same input which selects the device
`
`also selects the corresponding favorite list, as required by claim 1 of the ‘930
`
`patent. See Ex. 1008 at ¶ 32-39.
`
`In addition to the Realistic publication, the Tandy Corporation also disclosed
`
`detailed structure for remote controllers in patents, such as the Evans patent. See
`
`Ex. 1004 at p. 1 (identifying Tandy as Assignee).
`
` Evans discloses a
`
`“reconfigurable remote control” for multiple products that can be selected by
`
`dedicated keys. Id. at 1:7-11 and 4:5-22. Evans further teaches that “the heart of
`
`the controller is a microprocessor” that is coupled to a RAM and an LCD display.
`
`Id. at 4:46-63. Since Realistic and Evans are directed to remote controls from the
`
`same company, skilled artisans at the time understood that it was obvious to
`
`
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
`
`implement the Realistic remote to use instructions executable by a processing
`
`device for displaying information to a user, as taught by Evans. See Ex. 1008 at ¶
`
`34-39.
`
`Accordingly, as explained below in more detail, there is a reasonable
`
`likelihood that Realistic in light of Evans renders obvious claim 1 of the ‘930
`
`patent.
`
`B. Claim 1 is obvious over ProntoEdit in view of Realistic
`
`ProntoEdit is a user guide published in 2000 by Philips for configuring a
`
`Pronto remote controller. See Ex. 1005 at pp. 5, 6, and 9. ProntoEdit “fully
`
`defines a Pronto user interface including all devices, macro groups, panel layouts,
`
`button appearances and the behavior of all buttons.” Id. The “Panel” defines a
`
`portion of the screen and can include buttons with corresponding actions. Id. at p.
`
`8. The “Device” includes a list of panels. Id. In addition, any button can jump to
`
`any panel. Id. at pp. 8 and 19.
`
`Furthermore, Realistic discloses defining a separate list of favorite channels
`
`for each device. See Ex. 1003 at p. 36. Thus, skilled artisans at the time
`
`understood that ProntoEdit can be used to define a button that selects a device and
`
`a corresponding panel of favorite channels as taught by Realistic. See Ex. 1008 at ¶
`
`40-48. Indeed, such a panel showing favorite channels for a TV using ProntoEdit
`
`was developed and published by Aaron Hughart in early 2001. See Ex. 1007.
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`Accordingly, as explained below in more detail, there is a reasonable
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`likelihood that ProntoEdit in view of Realistic renders obvious claim 1 of the ‘930
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`patent.
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`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
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`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioner provides in the following
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`description a detailed comparison of the claimed subject matter and the prior art
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`specifying how each element of the challenged claim is found in the prior art
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`references. Further information and details supporting the unpatentability of claim
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`1 of the ‘930 patent over the prior art can be found in the Geier Declaration (Ex.
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`1008), incorporated herein by reference.
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`A.
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`Summary of Prior Art
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`1.
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`Realistic Universal Remote Control Owner’s Manual Cat.
`No. 15-1903 (Realistic - Exhibit 1003)
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`Realistic is a user manual published by Tandy Corporation in 1989 for a
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`universal remote control with an LCD display. Ex. 1003 at pp. 1-3 and 5.
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`With the Realistic remote, the user can control eight devices (TV, VCR1,
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`VCR2, CABLE, RVCR, CD, SAT, and AUX). Id. at p. 8. The user can select the
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`desired device by pressing a SELECT key and a corresponding device indicator
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`appears on the display. Id.
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`The Realistic remote has a favorite channel feature that allows the user to
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`“specify up to 32 favorite-channels for each of the eight devices the URC can
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`command.” Id. at p. 36.
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`The specified “favorite-channel list” can be reviewed on the display of the
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`remote by using the SCROLL keys. Id. at pp. 37-38. After the favorite channel
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`lists are programmed, pressing the FAVORITE key causes the remote to then
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`transmit the channels from the favorite channel list when the CHANNEL keys are
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`pressed. Id. at pp. 38-39.
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`Realistic teaches that when the user presses a SELECT key to change
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`devices, the “favorite channel list becomes active for any device that you select.”
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`Id. at p. 39. If the selected device has no favorite channel list, no favorites are
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`displayed. Id.
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`Thus, Realistic teaches that the same input which selects the device also
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`selects the corresponding favorite list, as required by claim 1 of the ‘930 patent.
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`See Ex. 1008 at ¶ 33.
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`2.
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`U.S. Patent No. 4,825,200 (“Evans,” Exhibit 1004)
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`Evans issued in 1989 and identifies Tandy Corporation as the Assignee on
`
`its face. See Ex. 1004 at p. 1 (identifying Tandy as the Assignee). Evans discloses
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`a “reconfigurable remote control” for multiple products that can be selected by
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`dedicated keys. Id. 1:7-11 and 4:5-22. Evans’s Figure 1 shows the keys on the
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`disclosed remote control:
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`Evans further teaches that “the heart of the controller is a microprocessor”,
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`and “[m]ost of the functions … are performed through the programming of
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`microprocessor 100.” Id. at 4:46-63 and 14-40-45. Figure 2 of Evans shows the
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`microprocessor and other functional blocks as follows:
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`In Evans, the microprocessor is coupled to a RAM and an LCD display. Id.
`
`at FIG. 2. The RAM in Evans stores the program code, and the LCD displays
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`information. Id. at FIG. 2 and 11:57-12:26. Evans discloses, for example, that in
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`normal use, the LCD can display information such as the name of the key or
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`function of the code to be outputted. Id. at 11:57-12:26.
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`3.
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`ProntoEdit User Guide (“ProntoEdit,” Exhibit 1005)
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`ProntoEdit is a user guide published in 2000 by Philips for a tool for
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`configuring a remote control device with the trade name “Pronto”. See Ex. 1005 at
`
`pp. 5, 6, and 9. The User Guide for the Pronto remote control device itself
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`specifically refers to ProntoEdit as a tool available from the Internet to personalize
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`the Pronto remote control beyond its standard programming features. See, e.g., Ex.
`
`1006 at p. 34.
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`ProntoEdit “fully defines a Pronto user interface including all devices, macro
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`groups, panel layouts, button appearances and the behavior of all buttons.” See Ex.
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`1005 at pp. 5, 6, 8 and 9. This user interface is disclosed in ProntoEdit as follows:
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`
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`Id. at p. 5-6.
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`In ProntoEdit, the “Panel” defines a portion of the screen and can include
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`buttons with corresponding actions. Id. at p. 8. The “Device” includes a list of
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`panels. Id. In addition, any button can jump to any panel. Id. at pp. 8 and 19.
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`ProntoEdit can create a “CCF, or Pronto configuration file, [which] stores a
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`single Pronto configuration. … CCFs have file extension ‘ccf.’” Id. at 8. For
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`example, such a ProntoEdit configuration file can define panels of favorite
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`channels for a Pronto remote control, as demonstrated by Aaron Hughart in early
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`2001. See Ex. 1007 (and figure reproduced as follows):
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`B. Detailed Grounds for Unpatentability Arguments
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`1. Ground 1: Claim 1 is unpatentable as obvious over
`Realistic in view of Evans under 35 U.S.C. § 103(a).
`
`The Realistic reference in light of Evans disclose all of the elements of
`
`claim 1 of the ‘930 patent as discussed below. Ex. 1008 at ¶ 32-39. Furthermore,
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`combining the references was obvious to skilled artisans at the time for the reasons
`
`discussed above at Section VI(A), and in more detail below. Thus, claim 1 of the
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`‘930 patent is unpatentable as obvious over the Realistic reference in light of
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`Evans. Ex. 1008 at ¶ 28-39.
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`Claim 1
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`An electronically readable media having embedded instructions
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`executable by a processing device of a hand held device for
`
`displaying information to a user of the hand held device, the
`
`instructions performing steps comprising:
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`Realistic discloses a universal remote control with an LCD display.
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`Realistic at pp. 1-3 and 5.
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`Realistic also discloses memory to “remember up to 119 commands or
`
`
`
`
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`command sequences.” Id. at p. 45.
`
`
`Skilled artisans at the time understood that the remote’s memory also
`
`includes instructions executable by a processing device of a hand held device for
`
`displaying information. See Ex. 1008 at ¶ 17-23, 36.
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`Furthermore, Evans discloses a “reconfigurable remote control” for multiple
`
`products that can be selected by dedicated keys. See Ex. 1004 at FIG. 1 and 1:7-11
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`and 4:5-22. Figure 1 shows the remote control with the keys:
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`
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`Evans further teaches that “the heart of the controller is a microprocessor”,
`
`and “[m]ost of the functions … are performed through the programming of
`
`microprocessor 100.” Id. at FIG. 2 and 4:46-63 and 14-40-45. Figure 2 of Evans
`
`shows the processor connected to other blocks of the system:
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`Petition for Inter Partes Review of U.S. Patent No. 7,831,930
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`In Evans, the microprocessor is coupled to a RAM and an LCD display. Id.
`
`The RAM stores the program code and the LCD displays information, for example
`
`in normal use, the name of the key or function of the code to be outputted. Id.
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`In a section titled “Normal Use”, Evans teaches that “[t]he first step in using
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`the controller to control a particular device is to operate select keys 18A and/or
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`18B to illuminate the annunciator corresponding to the selected device. The
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`controller is then held with the I/R transmitter 138 pointed in the general direction
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`of the device to be controlled and the key which has been programmed for the
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`desired function on the desired device is operated. This causes the name of the key
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`or function to appear on display 14 and causes the I/R code for the function to be
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`outputted.” Id. at 11:57-12:26.
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`Thus, Realistic alone or in view in Evans discloses, to a person of ordinary
`
`skill, the preamble of claim 1. See Ex. 1008 at ¶ 17-23, 36.
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`allowing a plurality of lists of favorite channels to be defined for
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`display in a display of the hand held dev