`
`
`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: Foster, William J.
`Patent No.: RE39,059
`(Reissue of 6,211,870)
`Filed: March 31, 2003
`Issued: Apr. 4, 2006
`Assignee: Universal Electronics Inc.
`Title: COMPUTER
`PROGRAMMABLE REMOTE
`CONTROL
`
`
`
`
`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. RE39,059
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. RE39,059
`
`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 .................... 3
`A. Grounds For Standing ................................................................. 3
`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 ................ 5
`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.
`
`V.
`
`VI.
`
`SUMMARY OF THE '059 PATENT ............................................... 6
`A. Summary of the Prosecution History of the '059 Patent .......... 8
`
`DETAILED CLAIM CONSTRUCTION ........................................ 8
`A. Construction of Terms ................................................................. 8
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE '059 PATENT IS UNPATENTABLE ...... 9
`A. Claims 13-17, 19-26, and 30 of the ‘059 are obvious over
`Lexicon in view of Ciarcia .......................................................... 9
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
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`B. Claims 13-17, 19-26, and 30 of the ‘059 are obvious over
`AMX in view of Admitted Prior Art ........................................ 11
`
`VII. DETAILED EXPLANATION OF HOW THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ................... 12
`A. Summary of Prior Art ................................................................ 12
`1. Lexicon 500T System Controller, Owner’s Guide and
`Programming Manual, © 1994 Lexicon, Inc.
`(Lexicon - Exhibit 1003) ................................................... 12
`2. “Build a Trainable Infrared Master Controller,” by
`Steve Ciarcia, BYTE March 1987 at pp. 113-123
`(Ciarcia, Exhibit 1004) ..................................................... 14
`3. Color Passive-Matrix LCD Touch Panels Instruction
`Manual, 10/96 © 1996 AMX Corporation (AMX,
`Exhibit 1005) ...................................................................... 15
`B. Detailed Grounds for Unpatentability Arguments ................. 16
`1. Ground 1: Claims 13-17, 19-26, and 30 are
`unpatentable as obvious over Lexicon in view of
`Ciarcia under 35 U.S.C. § 103(a). ..................................... 16
`2. Ground 2: Claims 13-17, 19-26, and 30 are
`unpatentable as obvious over AMX in view of
`admitted prior art under 35 U.S.C. § 103(a). .................. 34
`
`VIII. CONCLUSION ................................................................................. 54
`
`
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
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`EXHIBIT LIST
`
`1001.
`
`1002.
`
`1003.
`
`1004.
`
`1005.
`
`1006.
`
`1007.
`
`U.S. Patent No. RE39,059 (filed Mar. 31, 2003) (issued Apr. 4, 2006)
`to William J. Foster (“the ‘059 patent”).
`Prosecution history of U.S. Patent Application Serial No. 10/403,454,
`which matured into the '059 Patent.
`Lexicon 500T System Controller, Owner’s Guide and Programming
`Manual, © 1994 Lexicon, Inc (“Lexicon”).
`
`“Build a Trainable Infrared Master Controller,” by Steve Ciarcia,
`BYTE March 1987 at pp. 113-123 (“Ciarcia”).
`Color Passive-Matrix LCD Touch Panels Instruction Manual, 10/96 ©
`1996 AMX Corporation (AMX).
`Declaration of Jim Geier, Ph.D., In Support of the Petition for Inter
`Partes Review of U.S. Patent No. RE39,059 (“Geier Declaration”).
`Complaint for Patent Infringement in Universal Electronics, Inc. v.
`Universal Remote Control Inc., Civil Action No. SACV 13-00984,
`filed June 28, 2013 (“2013 UEI Litigation”).
`
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
`
`Petitioner Universal Remote Control, Inc. (“Petitioner” or “URC”)
`
`respectfully requests inter partes review of claims 13-17, 19-26, and 30 of U.S.
`
`Patent No. RE39,059 (the “'059 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 claims 13-17,
`
`19-26, and 30 of the '059 Patent are 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"). See Ex. 1007.
`
`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
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
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`patents-in-suit are U.S. Patent Nos. 5,228,077, 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. Id.
`
`This Petition for inter partes review is directed to U.S. Patent No.
`
`RE39,059. 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:
`
`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
`
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
`
`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 less than 20 claims is being requested (claims 13-
`
`17, 19-26, and 30 of the ‘059 patent), 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.
`
`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 '059 Patent is satisfied.
`
`A. Grounds For Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the '059
`
`Patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from petitioning for inter partes review of the '059 Patent on the grounds
`
`identified herein.
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
`
`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 claims 13-17, 19-26, and 30 of the '059
`
`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 claims 13-17, 19-26, and 30 of the '059 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 '059 Patent
`
`is requested in view of the following references, each of which is prior art to
`
`claims 13-17, 19-26, and 30 of the '059 Patent under one or more of 35 U.S.C. §
`
`102(a), (b), and/or (e):
`
`(1) Lexicon 500T System Controller, Owner’s Guide and Programming
`
`Manual, © 1994 Lexicon, Inc. (“Lexicon”). See Ex. 1003. Lexicon is
`
`prior art to the ‘059 patent at least under 35 U.S.C. § 102(b).
`
`(2) “Build a Trainable Infrared Master Controller,” by Steve Ciarcia, BYTE
`
`March 1987 at pp. 113-123 (“Ciarcia”). See Ex. 1004. Ciarcia is prior
`
`art to the ‘059 patent at least under 35 U.S.C. § 102(b).
`
`(3) Color Passive-Matrix LCD Touch Panels Instruction Manual, 10/96 ©
`
`1996 AMX Corporation (“AMX”). See Ex. 1005. AMX is prior art to
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
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`the ‘059 patent at least under 35 U.S.C. § 102(a).
`
`The Lexicon, Ciarcia, and AMX references were not considered during
`
`prosecution of the ’059 patent. Lexicon, Ciarcia, and AMX present new, non-
`
`cumulative technological teachings. A detailed discussion of the references and
`
`their applicability to claims 13-17, 19-26, and 30 of the '059 patent is provided
`
`starting at Section VII(B) below.
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '059 Patent
`
`is requested on the following grounds.
`
`Ground 1. Claims 13-17, 19-26, and 30 are unpatentable as obvious over
`
`Lexicon in view of Ciarcia under 35 U.S.C. § 103(a).
`
`Ground 2. Claims 13-17, 19-26, and 30 are unpatentable as obvious over AMX
`
`in view of admitted prior art under 35 U.S.C. § 103(a).
`
`
`
`
`
`
`
`3. How the challenged claims are to be construed
`
`The ‘059 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.” Claims 13-17, 19-26, and 30 of the ‘059 patent do not include means-
`
`plus-function or step-plus-function limitations.
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
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`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 claims 13-17,
`
`19-26, and 30 of the ‘059 patent are unpatentable under the statutory grounds
`
`identified above, including an identification of where each element is found in the
`
`prior art patents or printed publications (or admitted prior art), 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. 1006), hereby incorporated
`
`by reference.
`
`IV. SUMMARY OF THE '059 PATENT
`
`The ‘059 patent is directed to creating user selectable screen objects (soft
`
`keys) on a general purpose computer and transferring those screen objects to a
`
`hand-held remote controller. See the ‘059 patent at Abstract. A screen of a remote
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`control development program creating a new soft key (1065) is shown in FIG. 10
`
`of the ‘059 patent (reproduced below). Id. at 4:7-10.
`
`
`
`According to the ‘059 patent, the remote control development software can
`
`provide object oriented editing controls to modify the shape and location of soft
`
`keys. Id. at 10:59-11:12. The ‘059 admits that “object-oriented editing controls
`
`[are] … known in the art.” Id. at 11:6-12. See Ex. 1006 at ¶¶23-24.
`
`Independent claims 13 and 23 of the ‘059 patent are directed to a remote
`
`control development program and method, respectively, that provide a user with
`
`the ability to edit a screen object, such as a soft key, and include the operations of
`
`displaying the screen object, information, and tagnames, and accepting a user
`
`selection of the assigned command. Dependent claims 14-17, 19-22, 24-26 and 30
`
`require additional limitations such as programmable key objects (claims 14 and
`
`24), simultaneous display of information (claims 15 and 25), download or transfer
`
`of the screen object (claims 16, 17, and 26), a soft key (claim 19), preconfigured
`
`screen objects (claims 20, 21, and 30) and editing tagnames (claim 22).
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
`
`A.
`
`Summary of the Prosecution History of the '059 Patent
`
`The ‘059 patent is a broadening reissue of US Patent No. 6,211,870 filed on
`
`July 7, 1998, which issued on April 3, 2001. See Ex. 1001 at p. 1. The ‘870 patent
`
`claims priority to Provisional Application No. 60/051,848 filed on July 7, 1997.
`
`Id. The ‘059 patent names William Foster as a sole inventor and UEI as the
`
`assignee. Id.
`
`In a preliminary amendment filed in the reissue prosecution on March 31,
`
`2003, see Ex. 1002 at p. 45, applicant introduced new claims 13-30.
`
`In an Office Action of September 10, 2004, the Examiner objected to and
`
`rejected original claims 1-12 for indefiniteness, but allowed the new claims 13-30.
`
`The Examiner stated that the reasons for allowance are based on “performing all of
`
`steps (a)-(e) particularly step (c) of claim 13, or similarly recited and more
`
`narrowly recited in claims 1, 9, and 23.” Ex. 1002 at p. 86.
`
`In a phone interview, the applicants authorized the Examiner to correct the
`
`indefiniteness issues by an Examiner’s amendment. Id. at p. 97. The Examiner
`
`allowed all the claims and the ‘059 patent issued on April 4, 2006.
`
`V. DETAILED CLAIM CONSTRUCTION
`
`A. Construction of Terms
`
`Claims in the presently requested inter partes review proceeding are to be
`
`construed in accordance with the broadest reasonable construction in light of the
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
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`specification of the ‘059 patent in accordance with 37 C.F.R. §42.100(b). Unless
`
`otherwise indicated, the terms of the ‘059 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 ‘059 patent under the different standards and different
`
`applicable court procedures in the pending 2013 UEI Litigation.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '059 PATENT IS UNPATENTABLE
`
`Petitioner provides a number of prior art publications demonstrating
`
`unpatentability of claims 13-17, 19-26, and 30 of the ‘059 patent. The grounds of
`
`invalidity set forth below explain how numerous disclosures in the prior art teach
`
`expressly or inherently the limitations of claims 13-17, 19-26, and 30 of the ‘059
`
`patent.
`
`A. Claims 13-17, 19-26, and 30 of the ‘059 are obvious over Lexicon
`in view of Ciarcia
`
`Lexicon discloses 500T, “a programmable touchscreen computer that is
`
`designed to provide wireless control of audio/video and automation systems … and
`
`also incorporates a unique programmable user interface, allowing it to provide a
`
`simple, intuitive, and customized interface for any system.” Ex. 1003 at 1. “The
`
`500T has a built-in drawing program that makes it easy to place buttons, text, and
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
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`symbols anywhere on the display.” Id. Lexicon also discloses a “serial port for
`
`communication with a special PC interface program for backup and restore of
`
`previously programmed displays and IR commands.” Id. Thus, Lexicon teaches
`
`skilled artisans the claimed object oriented “creating and editing” in connection
`
`with a general purpose computer. See Ex. 1006 at ¶¶30-31.
`
`Ciarcia further teaches a “Master Controller” that “uses an IBM PC for
`
`training. … The IBM PC is connected to the Master Controller via an RS-232
`
`interface and is used to set up menus of devices (receivers, CD players, tape decks)
`
`and functions for each device (turn on, play forward, etc.). After a menu is
`
`downloaded to the Master Controller, each function is ‘taught’ and tested.” Ex.
`
`1004 at p. 114. See Ex. 1006 at ¶32.
`
`Thus, skilled artisans at the time understood that Lexicon’s object oriented
`
`programmable user interface can be implemented on a PC and downloaded later, as
`
`taught by Ciarcia, since “it really simplified the logic [because] [t]he PC has a full
`
`keyboard and display, disk storage, and, best of all, high level programming
`
`languages. Writing a PC program is much easier than writing an 8031 program.”
`
`See Ex. 1004 at 119; see also Ex. 1006 at ¶33.
`
`Accordingly, as explained below in more detail, there is a reasonable
`
`likelihood that Lexicon in light of Ciarcia renders obvious claims 13-17, 19-26,
`
`and 30 of the ‘059 patent. See Ex. 1006 at ¶¶30-40.
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`B. Claims 13-17, 19-26, and 30 of the ‘059 are obvious over AMX in
`view of Admitted Prior Art
`
`AMX discloses “color passive-matrix (dual-scan) touch panels … that use a
`
`microprocessor to control a wide range of multimedia equipment. … You can use
`
`TPDOC or TPDesign touch panel design programs to create custom pages with
`
`buttons, icons, sliders, bar graphs, time displays, logos, and drawings.” Ex. 1005
`
`at p. 1. The AMX touch panels also offer “[p]anel programming, screens, and
`
`drawings that can be uploaded and downloaded with TPDOC or TPDesign touch
`
`panel software” using “RS-232 port communication.” Id. at 1-2. The TPDOC
`
`and TPDesign programs are respectively DOS- and Windows-based design
`
`programs. Id. at 138. The available design features include “color settings, page
`
`flips, and variable text,” id. at 3, and allow designating the control functions for
`
`each object, such as buttons and icons, with customizable attributes. Id. at 19-114.
`
`Skilled artisans at the time of the ‘059 priority date understood that DOS-
`
`and Windows-based design programs can run on general purpose computers. See
`
`Ex. 1006 at ¶43. Furthermore, applicant admitted that object-oriented editing tools
`
`were available on general-purpose computers. See Ex. 1001 at 11:6-12. Thus,
`
`skilled artisans at the time understood that the programs like TPDesign that run on
`
`Windows can use object-oriented tools for design of features, as claimed by the
`
`‘059 patent. See Ex. 1006 at ¶43.
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
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`Accordingly, as explained below in more detail, there is a reasonable
`
`likelihood that AMX renders obvious claims 13-17, 19-26, and 30 of the ‘059
`
`patent. See Ex. 1006 at ¶¶41-44.
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioner provides in the following
`
`description a detailed comparison of the claimed subject matter and the prior art
`
`specifying how each element of the challenged claim is found in the prior art
`
`references. Further information and details supporting the unpatentability of
`
`claims 13-17, 19-26, and 30 of the ‘059 patent over the prior art can be found in
`
`the Geier Declaration (Ex. 1006), incorporated herein by reference.
`
`A.
`
`Summary of Prior Art
`
`1.
`
`Lexicon 500T System Controller, Owner’s Guide and
`Programming Manual, © 1994 Lexicon, Inc. (Lexicon -
`Exhibit 1003)
`
`Lexicon discloses 500T, “a programmable touchscreen computer that is
`
`designed to provide wireless control of audio/video and automation systems .” Ex.
`
`1003 at 1 and Figures in pp. 3-4.
`
`Lexicon’s 500T “incorporates a unique programmable user interface,
`
`allowing it to provide a simple, intuitive, and customized interface for any system.”
`
`Ex. 1003 at 1. “The 500T has a built-in drawing program that makes it easy to
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
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`place buttons, text, and symbols anywhere on the display.” Id. at 1, 10-13.
`
`Lexicon shows this drawing feature in its figures as follows:
`
`
`
`
`
`In Lexicon, the created buttons and pages can be assigned to different IR
`
`commands or devices. Id. at 33. As shown in Lexicon’s figures:
`
`
`
`Lexicon also discloses a “serial port for communication with a special PC
`
`interface program for backup and restore of previously programmed displays and
`
`IR commands.” Id. 1. Thus, Lexicon teaches skilled artisans the claimed object-
`
`oriented “creating and editing” in connection with a general purpose computer.
`
`See Ex. 1006 at ¶31.
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`Petition for Inter Partes Review of U.S. Patent No. RE39,059
`
`2.
`
`“Build a Trainable Infrared Master Controller,” by Steve
`Ciarcia, BYTE March 1987 at pp. 113-123 (Ciarcia,
`Exhibit 1004)
`
`The Ciarcia article was published in the March 1987 issue of the BYTE
`
`magazine (library stamped date of February, 1987). See Ex. 1004 at p. 113.
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`Ciarcia discloses an “infrared Master Controller that takes charge of all your
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`gadgets, [and] can prevent ‘controller clutter.’” Ex. 1004 at p. 113; see also Photo
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`1 at p. 114 and Photo 4 at p. 121.
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`Ciarcia’s “Master Controller” includes an “Intel 8031 single-chip
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`microprocessor running a program stored in a 2764 EPROM” and the “menus and
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`IR signals are stored in a single 32K-byte battery-backed static RAM.” Id. at p.
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`114; see also Photo 2 at p. 115 and the circuit diagram of FIG. 1 at pp. 116-119.
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`Ciarcia further teaches that “[t]he Master Controller uses an IBM PC for
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`training. After that, it is battery operated and completely independent. The IBM
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`PC is connected to the Master Controller via an RS-232 interface and is used to set
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`up menus of devices (receivers, CD players, tape decks) and functions for each
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`device (turn on, play forward, etc.). After a menu is downloaded to the Master
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`Controller, each function is "taught" and tested. Next, the completed menu and
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`synthesis data are then uploaded to the IBM PC and stored on disk (in case you
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`want to load it into another Master Controller or add another device later without
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`retraining all of them).” Id. at p. 114.
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`3.
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`Color Passive-Matrix LCD Touch Panels Instruction
`Manual, 10/96 © 1996 AMX Corporation (AMX, Exhibit
`1005)
`
`AMX discloses “color passive-matrix (dual-scan) touch panels … that use a
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`microprocessor to control a wide range of multimedia equipment.” Ex. 1005 at
`
`pp. 1 and 2. AMX’s Figures 1 and 2 show these touch panels in a system
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`arrangement:
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`
`
`
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`The AMX touch panels can be programmed with “TPDOC or TPDesign
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`touch panel design programs to create custom pages with buttons, icons, sliders,
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`bar graphs, time displays, logos, and drawings.” Ex. 1005 at 1. The TPDOC and
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`TPDesign programs are, respectively, DOS- and Windows-based design programs.
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`Id. at 138.
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`AMX’s touch panels also offer “[p]anel programming, screens, and
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`drawings that can be uploaded and downloaded with TPDOC or TPDesign touch
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`panel software” using “RS-232 port communication.” Id. at 1-2. The available
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`design features include “color settings, page flips, and variable text,” id. at 3, and
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`allow for designating the control functions for each object, such as buttons and
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`icons, with customizable attributes. Id. at 19-114. Examples of these design
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`features and control functions are shown in AMX’s Figures 18 and 20 at pp. 19
`
`and 21:
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`
`B. Detailed Grounds for Unpatentability Arguments
`
`
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`1. Ground 1: Claims 13-17, 19-26, and 30 are unpatentable as
`obvious over Lexicon in view of Ciarcia under 35 U.S.C. §
`103(a).
`
`The Lexicon reference in light of Ciarcia disclose all of the elements of
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`claims 13-17, 19-26, and 30 of the ‘059 patent as discussed below. Ex. 1006 ¶¶30-
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`40. Furthermore, combining the references was obvious to skilled artisans at the
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`time for the reasons discussed above at Section VI.A, and in more detail below.
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`Thus, claims 13-17, 19-26, and 30 of the ‘059 patent are unpatentable as obvious
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`over the Lexicon reference in light of Ciarcia.
`
`Claim 13
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`A remote control development program for use in connection with
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`a general purpose computer comprising a processor, an operating
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`system, a short term memory, a long term memory, a graphics
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`display and a user input device, the remote control development
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`program comprising:
`
`Lexicon and Ciarcia disclose to skilled artisans the claimed a remote control
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`development program. See Ex. 1006 at ¶¶35.
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` Lexicon discloses a remote control development program used with a
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`standard computer having all the claimed standard hardware elements. See, e.g.,
`
`Ex, 1003 at p. 1 (“The 500T has a built-in drawing program that makes it easy to
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`place buttons, text, and symbols anywhere on the display.”); see also id. at p. 7
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`(“COMPUTER LINK … can be used to load previously developed pages.”); see
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`also id. at pp. 9-16 (Chapter 2: Creating and Editing Pages).
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`Ciarcia similarly discloses a remote control development program used with
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`a standard computer having all the claimed standard hardware elements. See Ex.
`
`1004 at p. 114. (“The Master Controller uses an IBM PC for training. After that, it
`
`is battery-operated and completely independent. The IBM PC is connected to the
`
`Master Controller via an RS-232 interface and is used to set up menus of devices
`
`(receivers, CD players, tape decks) and functions for each device (turn on, play
`
`forward, etc.). After a menu is downloaded to the Master Controller, each function
`
`is ‘taught’ and tested.”)
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`Skilled artisans at the time understood that computers include a processor,
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`operating system, memory a graphic display and a user input device. See Ex. 1006
`
`at ¶36.
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`a set of instructions on a computer-readable medium, the
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`instructions configured to cause the general purpose computer to
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`provide a user with the ability to edit a screen object comprising a
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`screen layout definition and at least one key object which is a soft
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`key object, the screen object providing for a screen display and
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`commands associated therewith wherein each soft key object
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`comprises a representation of a soft key, a location for displaying
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`the representation of the soft key, and a tagname for a command
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`which is to be issued when the soft key is activated,
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`Lexicon and Ciarcia disclose to skilled artisans providing the ability to edit
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`screen objects, such as soft keys, as claimed. Ex. 1006 at ¶¶38-39.
`
`For example, the Lexicon 500T System Controller “displays a page with a
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`drawing grid” on a display. See Ex. 1003, Figures at p. 10, 12, 13.
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`“Locating, sizing and aligning buttons on a page is very easy.” Id. at p. 11.
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`In Lexicon, “[a]ll buttons are created by touching the drawing grid where the
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`button is to be located, first touching the upper left corner, then by touching the
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`lower right corner… Once a button has been placed on the page, its shape can be
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`changed. The list of available button shapes can be displayed by touching the
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`button while in DRAW BUTTON mode.” Id. at p. 12. “The text editor is used to
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`place text and symbols on a page. Text can be placed both within buttons and
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`within the page title area.” Id. at p. 14. “Additional symbols can be added by
`
`pressing the MORE >> button. This will display a window containing the
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`additional symbols.” Id. at p. 15. Lexicon further teaches an expandable system as
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`follows: “The PC Interface program contains some basic templates (keypads,
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`transport controls, etc.) that can be downloaded and modified. You can also build
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`your on library of pages to be downloaded the next time you use the same
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`product.” Id. at p. 32.
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`Similarly, Ciarcia discloses to a person of skill the ability to design a user-
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`programmable interface in a general purpose computer. See, e.g., Ex. 1004 at pp.
`
`113-114. (“Rather than attempt to contain all the necessary intelligence and
`
`processing circuitry, the Master Controller temporarily utilizes an external
`
`computer as a user-programmable interface. … The master controller uses an IBM
`
`PC for training. … The IBM PC is connected to the Master Controller via an RS-
`
`232 interface and is used to set up menus of devices (receivers, CD players, tape
`
`decks) and functions for each device (turn on, play forward, etc.). … The Master
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`Controller’s IBM PC program can also combine sets of infrared signals once they
`
`are trained for their respective devices.” )
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`Lexicon discloses locating, sizing and labeling buttons for display on a page
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`of a hand held device and uploading and downloading pages to a PC. Ex. 1003 at
`
`p. 1-15 and 32, and associated figures. Ciarcia discloses setting up menus for a
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`hand held device on a display of a computer and then downloading them to the
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`remote control. Ex. 1004 at pp. 113-114 and associated figures. Thus, it would
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`have been at least obvious at the time of the invention of the ‘059 patent to utilize
`
`an external computer as taught in Ciarcia to locate, size and label pages and then
`
`download them for display on the handheld as taught by Lexicon. See Ex. 1006 at
`
`¶¶37-39.
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`the command comprising a message which, when received by a
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`given multimedia processing unit, causes
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`the multimedia
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`processing unit to a