throbber
Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 9
`
`
` Entered: November 24, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIVERSAL REMOTE CONTROL, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC., 1
`Patent Owner.
`____________
`
`Case IPR2014-01112
`Patent RE39,059 E
`__________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM A. CAPP, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1 Patent Owner represents that the owner of the patent and real party-in-
`interest is Universal Electronics, Inc. Paper 4. Office assignment records
`indicate, however, that U.S. Bank National Association is the owner of the
`patent. Patent Owner should update Office assignment records to be
`consistent with its representations made in Paper 4 of this proceeding.
`
`
`

`

`Case IPR2014-01112
`Patent RE39,059 E
`
`
`Petitioner Universal Remote Control, Inc. filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 13–17, 19–26, and 30 of
`U.S. Patent No. RE39,059 E (Ex. 1001, the “’059 patent”). Patent Owner
`Universal Electronics, Inc. filed a Preliminary Response (Paper 8, “Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a). We conclude that
`Petitioner has failed to show a reasonable likelihood of prevailing in
`challenging these claims and we decline to institute inter partes review.
`
`I. BACKGROUND
`
`A. The ’059 patent (Ex. 1001)
`
`The ’059 patent, titled Computer Programmable Remote Control,
`relates to “remote control devices for electronic products.” Ex. 1001, 1:30–
`31. The invention features a remote control development program that
`allows the remote control to be programmed by a user from a personal
`computer using an object-oriented user interface. Id. at 3:20–24. After
`being programmed, the remote can issue multiple commands with a single
`key press. Id. at 3:23–26.
`The remote control has a graphic display with a touch screen overlay
`that allows the remote control to be programmed with soft keys. Id. at 5:53–
`55. In order to program the remote control, the remote control connects to a
`personal computer through a docking station or USB port. Id. at 6:1–21.
`The remote control development software allows the user to create
`and edit “screen objects” on the personal computer and then download the
`screen objects to the remote control unit. Id. at 7:32–35. A screen object
`comprises a screen layout and soft key objects. Id. at 7:35–49. A soft key
`object, in turn, comprises a graphic representing a soft key that will be
`
`
`
`
`2
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`displayed on the screen of the remote control. Id. at 7:38–44. The soft key
`also comprises: (1) a text label for the graphic, (2) a tagname for the
`command that will issue when the soft key is pressed, and (3) a location for
`the graphic on the display. Id.
`The remote control development software includes preconfigured
`screen objects that are downloaded to and maintained in a database when the
`software is installed on the computer. Id. at 7:50–55. An example of a
`screen object is depicted in Figure 7 of the ’059 Patent shown below.
`
`
`“Figure 7 is a screen shot of a screen object layout screen of a remote
`control development program.” Id. at 3:65–67. “The right pane 720 shows
`a representation 726 of the programmable remote control unit 200, with a
`representation 721 of the appearance of the screen object in the
`programmable remote control unit’s display 221. . . .” Id. at 10:1–5. The
`representation 721 includes the name of the multimedia device (TV1) that
`will be controlled by the remote control. Id. at 10:57. The representation
`
`
`
`3
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`721 also includes soft keys 722 corresponding to the keys of a remote
`control unit. Id. at 10:7–10. The representation 721 mimics the key sizes
`and locations of the remote control unit. Id. at 10:10–13. The left pane 710
`is a display of screen object information. The left pane 710 shows the screen
`object’s name 711 and a list 712 of tagnames of the commands in the screen
`object. Id. at 10:14–17. Soft key objects may include more than one
`command. Id. at 11:13–14. In programming commands for a soft key
`object, tagnames may be dragged from the left pane 710 and dropped onto
`representations of the desired object in the right pane 720. Id. at 11:14–16.
`Next, the screen objects are downloaded from the computer to the
`remote control unit. Id. at 11:53–55. Once loaded with screen objects, the
`remote control unit is ready for use. Id. at 12:8–11. The remote control
`displays soft keys and other features of a screen object on the remote
`control’s display and then generates the commands of the soft key objects
`when the soft keys are pressed. Id. at 12:18–29.
`
`B. Illustrative Claim
`Petitioner challenges claims 13–17, 19–26, and 30. Claim 13,
`reproduced below, an independent claim, is illustrative:
`13. A remote control development program for use in
`connection with a general purpose computer comprising a
`processor, an operating system, a short term memory, a long
`term memory, a graphics display and a user input device, the
`remote control development program comprising:
`a set of instructions on a computer-readable medium, the
`instructions configured to cause the general purpose
`computer to provide a user with the ability to edit a screen
`object comprising a screen layout definition and at least
`one key object which is a soft key object, the screen object
`providing for a screen display and commands associated
`
`
`
`4
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`
`therewith wherein each soft key object comprises a
`representation of a soft key, a location for displaying the
`representation of the soft key, and a tagname for a
`command which is to be issued when the soft key is
`activated, the command comprising a message which,
`when received by a given multimedia processing unit,
`causes the multimedia processing unit to alter a defined
`setting of the multimedia processing unit in a predictable
`manner; and wherein the instructions are further
`configured to cause the general purpose computer to:
`(a) display a representation of the appearance of the screen
`object;
`(b) display information regarding the screen object and the
`key objects of the screen object;
`(c) accept user input via object oriented tools for creating
`and editing soft key objects;
`(d) display tagnames for commands which may be assigned
`to soft key objects in the screen object; and
`(e) accept user selections of commands to assign to soft key
`objects in the screen object.
`
`C. The Asserted Grounds of Unpatentability
`Petitioner challenges claims 13–17, 19–26, and 30 of the ’059 patent
`as unpatentable:
`(1) under 35 U.S.C. § 103(a) over Lexicon2 and Ciarcia3; and
`(2) under 35 U.S.C. § 103(a) over AMX4 and Admitted Prior art.
`
`
`2 LEXICON, INC., LEXICON 500T SYSTEM CONTROLLER: OWNER’S GUIDE AND
`PROGRAMMING MANUAL (1994) (Ex. 1003).
`3 Steve A. Ciarcia, Build a Trainable Infrared Master Controller, BYTE,
`113123 (March, 1987) (Ex. 1004).
`4 AMX, COLOR PASSIVE-MATRIX LCD TOUCH PANELS (FIRMWARE VERSION
`G2 OR LOWER) INSTRUCTION MANUAL (1996) (EX. 1005).
`
`
`
`5
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`
`Petitioner’s unpatentability challenges are supported by the
`Declaration of James T. Geier (Ex. 1006).
`
`D. Claim Interpretation
`
`In an inter partes review, claims are given their broadest reasonable
`interpretation consistent with the Specification. See 37 C.F.R. § 42.100(b);
`In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). Within
`this framework, terms generally are given their “ordinary and customary
`meaning,” as would be understood by a person of ordinary skill in the art, in
`the context of the entire patent disclosure. Translogic, at 1257.5
`
`1. ”tagname for a command” – “tagname for commands”
`
`Petitioner’s proposed construction: [none].
`
`Patent Owner’s proposed construction: “descriptor for a
`command.”
`Prelim. Resp. 5.
`A claim construction analysis begins with, and is centered on, the
`claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
`256 F.3d 1323, 1331 (Fed. Cir. 2001). Each challenged claim contains the
`term “tagname for a command.” Claim 13 contains a limitation directed to a
`set of instructions that provide a user with the ability to edit a screen object
`on a computer. The screen object, in turn, comprises a screen layout, a soft
`key object, and commands associated with the soft key object. Each soft key
`object comprises: (1) a representation of the soft key; (2) a location for
`
`
`5 Citing Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
`banc).
`
`
`
`6
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`displaying the representation of the soft key; and (3) a “tagname for a
`command” that is issued when the soft key is activated.
`The Specification distinguishes between: (1) a text label for a graphic;
`and (2) a tagname for a command. See Ex. 1001, 7:40–42. A text label is a
`name or number that appears on the display screen proximate to a soft key
`graphic representation. For example, in Figure 7, on the right hand side of
`the screen, there are rectangular shaped buttons with words such as “mute,”
`“power,” “display,” and “enter,” displayed within respective rectangles. Ex.
`1001, Fig. 7. Such words comport with our understanding of a text label.
`On the left hand side of the screen there is a list of tagnames, including “TV-
`1_Power,” TV-1_Mute,” “TV-1_display,” and “TV-1_enter.” Id.
`In the event that the remote control is programmed to send commands
`to two or more television sets, the name of the television (or some other
`“multimedia processing unit” as referred to in the Specification) might
`change from TV1 to TV2 or some other analogous nomenclature. See Ex.
`1001, Fig. 1, 10:1–14. However, the text labels for the respective soft keys
`for TV1 and TV2 may be identical. For example, TV1 and TV2 might have
`similarly shaped soft key graphical representations with identical text labels
`for “mute” and “power,” etc.
`Thus, while the text labels for the soft keys for TV1 and TV2 might
`be identical, the tagnames will be different. Tagnames are associated with
`the actual commands that are transmitted to the different television sets. The
`command to turn power on or off on TV1 is different from the command to
`turn power on or off on TV2. As the commands are different, the respective
`tagnames for those respective commands are different. Thus, the tagname
`
`
`
`7
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`

`

`IPR2014-01112
`Patent RE39,059 E
`
`for the command to turn power on or off on TV1 will be different from the
`tagname for the command to turn power on or off on TV2.
`Also, the Specification discloses that the user can program the remote
`control to issue multiple commands with a single key press. Ex. 1001, 3:23–
`26.
`
`The soft key objects and programmable key objects preferably
`may include more than one command. Tagnames may be
`dragged from the left pane 710 and dropped onto representations
`of the desired object in the right pane 720. Preferably, if the user
`moves the mouse cursor 1060 over the representation of an
`object in the right pane 720, the remote control development
`software displays
`the commands associated with
`that
`representation. By double-clicking on the representation of the
`object, an edit window is preferably displayed so that the order
`of tagnames may be rearranged and sequence controls, such as
`if-else and for-next structures, may be inserted.
`
`Ex. 1001, 11:13–24. Patent Owner argues that “the distinction between a
`tagname and a text label becomes more apparent in embodiments in which a
`soft key object is assigned multiple commands.” Prelim. Resp. 8. Patent
`Owner provides an example related to Figure 11 and the associated
`disclosure in the Specification. Id. at 9–10, citing Ex. 1001, Fig. 11, 11:43–
`51. In Figure 11, the “Dad” screen object includes a soft key labeled
`“ESPN.” Id. at 9. Patent Owner’s point is that the ESPN soft key is
`associated with multiple commands, each with its own tagname. Therefore,
`while text labels are visual indicators on a display screen for a user to see,
`tagnames are functional in that they link a soft key object to commands that
`are transmitted to audio/visual equipment. Id. at 10.
`
`
`
`8
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`
`In view of the intrinsic record and, for the purpose of this decision, we
`adopt Patent Owner’s proposed construction. Thus, “tagname” is construed
`as a “descriptor for a command.”
`
`II. ANALYSIS
`
`A. Obviousness of Claims13–17, 19–26, and 30
`over Lexicon and Ciarcia
`
`1. Lexicon (Ex. 1003).
`Lexicon is an owner’s guide and programming manual for a Lexicon
`500T programmable touchscreen computer, which is designed to provide
`wireless control of audio/video systems. Ex. 1003, 1. The Lexicon 500T is
`a remote control device. Id. However, it also has, resident within the
`remote control device itself, a drawing program that allows the user to
`design user interface elements like buttons, text, and symbols. Id.
`The Lexicon 500T has a serial port for communication with a personal
`computer interface for backup and restore of previously programmed
`displays and commands. Id. The computer link between the personal
`computer and the Lexicon 500T device is limited to backing up and restoring
`data. Id, at 7.
`After using the drawing program to create a graphical page layout
`with buttons and labels, the Lexicon 500T “learns” command signals from a
`“donor” remote control through the sending and receiving of infrared
`signals. Id. at 20.
`
`2. Ciarcia (Ex. 1004).
`Ciarcia is a magazine article published in BYTE magazine in 1987.
`Ex. 1004. In the article, Mr. Ciarcia recounts his experience in developing
`an infrared master controller for a plurality of electronic devices. Id. at 113.
`
`
`
`9
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`Ciarcia’s Master Controller uses an external computer, such as an IBM PC
`as a user-programmable interface. Id. at 113–14. The Master Controller
`learns the IR signals from a plurality of device specific, dedicated remote
`controllers by recording and playing back the infrared signals that the
`respective dedicated remote controllers use. Id. at 114.
`
`3. Analysis of Claims 13 and 23.
`Petitioner argues that Lexicon and Ciarcia, collectively, disclose all of
`the limitations of the two challenged independent claims in this proceeding,
`claims 13 and 23. Pet. 16–23, 3031. Petitioner relies primarily on Lexicon
`to satisfy all of the claim limitations, except for the use of a general purpose
`computer to provide the user with the ability to edit a screen object. Id.
`Petitioner relies on Ciarcia as satisfying the claim limitations directed to use
`of a general purpose computer to program the remote control unit. Id.
`Petitioner alleges and argues that “it would have been 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 device disclosed by Lexicon.” Pet. 20.
`Patent Owner raises a number of arguments against Petitioner’s
`allegations and arguments of obviousness. We find it necessary to address
`only one of those arguments as it is dispositive of the issue of whether
`Petitioner has made a threshold showing for institution of an IPR trial. That
`issue centers around the claim limitations directed to the use of a “tagname
`for a command,” which limitations are present in both of the challenged
`independent claims.
`Patent Owner argues persuasively that the Petition does not establish
`that Lexicon and Ciarcia teach or suggest the tagname limitations in the
`
`
`
`10
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`claims. Prelim. Resp. 24. Patent Owner argues that Petitioner’s citation to
`passages in Lexicon that allegedly disclose the use of tagnames actually
`show nothing more than using text labels for buttons on the display screen.
`Id. at 25.
`Petitioner cites to passages at pages 10, 12, 13, 15 and 32 of Lexicon
`as satisfying the tagname limitation. Pet. 18–23. Petitioner also relies on
`testimony from Mr. Geier to establish that the recited pages in Lexicon
`disclose the use of tagnames as claimed. Id., citing Ex. 1006, ¶¶ 37–40. We
`have reviewed Petitioner’s evidence and agree with Patent Owner that
`Lexicon discloses nothing more than providing text labeling for soft key
`buttons. Petitioner provides no persuasive evidence that Lexicon discloses
`tagnames for a command. Petitioner has not directed us to any disclosure in
`Ciarcia that would overcome this deficiency in Lexicon.
`The ’059 patent proposes to overcome a problem in the consumer
`audio/visual equipment market related to the difficulty in programming
`universal remote control devices. Ex. 1001, 2:54–3:14. Integral to the ’059
`patent’s solution to this problem is the use of development software that can
`be downloaded to a computer to assist a user in programming a universal
`remote control. Id. at 7:18–20. The development software contemplates the
`creation of a database of screen objects. Id. at 7:50–55. Integral to the
`database of screen objects is the association of tagnames with corresponding
`commands that the remote control will issue when a soft key is pressed by
`the user. Id. at 7:35–49. In programming the remote control, the user is able
`to quickly associate a command with a graphic representation of a soft key
`through use of the development software database and its use of tagnames.
`Petitioner has not made a threshold showing that a “tagname for a
`
`
`
`11
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`command” is disclosed in the prior art or that it would have been obvious to
`modify the prior art to achieve the claimed invention.
`Accordingly, we find that Petitioner has failed to establish a
`reasonable likelihood that it would prevail at trial in establishing that claims
`13 and 23 are obvious over Lexicon and Ciarcia.
`
`4. Analysis of Claims 14–17, 19–22, 24–26, and 30.
`
`Claims 14–17, 19–22, 24–26, and 30 depend, directly or indirectly,
`from either claim 13 or claim 23. The Petition as to these claims and the
`asserted grounds over Lexicon and Ciarcia suffer from the same infirmity
`that we have discussed above with respect to claims 13 and 23. For
`essentially the same reasons discussed above, we find that Petitioner has
`failed to establish a reasonable likelihood that it would prevail at trial in
`establishing that claims 14–17, 19–22, 24–26, and 30 are obvious over
`Lexicon and Ciarcia.
`
`B.Obviousness of Claims13–17, 19–26, and 30
`over AMX and Admitted Prior Art.
`
`Patent Owner challenges the efficacy of Petitioner’s second ground of
`invalidity over AMX and Admitted Prior Art, among other things, on the
`same issue discussed above with respect to the first grounds, namely,
`whether the prior art discloses tagnames for commands. Prelim. Resp. 31.
`Once again, we will focus on this issue alone as it is dispositive of
`Petitioner’s entire second grounds of invalidity as to all challenged claims.
`Petitioner alleges that AMX discloses the use of tagnames as claimed.
`Pet. 37, 41. For evidentiary support, Petitioner relies on declaration
`testimony of Mr. Geier. Id. citing Ex. 1006, ¶¶ 41, 44. Paragraph 41 of Mr.
`Geier’s declaration describes a general overview of AMX without making
`
`
`
`12
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`any specific reference to tagnames, much less tagnames for commands in the
`context of remote control programming software on a computer. Paragraph
`44 of Mr. Geier’s declaration is a single sentence that, states, in conclusory
`fashion — “AMX also discloses object oriented tools for creating and
`editing soft keys, including tagnames.” Ex. 1006, ¶ 44. Mr. Geier’s
`declaration then cites to a range of 95 pages in AMX that purportedly
`supports his conclusory assertion. Id.
`A petition for inter partes review must include “[a] full statement of
`the reasons for the relief requested, including a detailed explanation of the
`significance of the evidence” relied on. See 37 C.F.R. § 42.22(a)(2). The
`Patent Trial and Appeal Board “may exclude or give no weight to the
`evidence where a party has failed to state its relevance or to identify specific
`portions of the evidence that support the challenge.” 37 C.F.R.
`§ 42.104(b)(5).6 Here, Petitioner has hinged its case on a single conclusory
`sentence from a declaration that, in turn, cites to a 95 page range in a
`reference with no effort to identify specific portions within that range that
`support the challenge. This is an insufficient showing to warrant institution
`of a trial for inter partes review.
`Accordingly, we find that Petitioner has failed to establish a
`reasonable likelihood that it would prevail at trial in establishing that claims
`13–17, 19–26, and 30 are obvious over AMX and Admitted Prior Art.
`
`
`6 Also, “[e]xpert testimony that does not disclose the underlying facts or data
`on which the opinion is based is entitled to little or no weight.” 37 C.F.R.
`42.65(a).
`
`
`
`13
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`
`III. CONCLUSION
`
`We conclude that Petitioner has not shown a reasonable likelihood of
`prevailing in challenging any claim of the ’059 patent.
`
`IV. ORDER
`
`After due consideration of the record before us, it is
`ORDERED that the petition is denied and no trial is instituted.
`
`
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`14
`
`

`

`IPR2014-01112
`Patent RE39,059 E
`
`For Petitioner:
`Douglas Miro
`dmiro@ostrolenk.com
`
`Keith Barkaus
`kbarkaus@ostrolenk.com
`
`Peter Kang
`pkang@sidley.com
`
`Theodore Chandler
`tchandler@sidley.com
`
`Ferenc Pazmandi
`fpazmandi@sidley.com
`
`
`
`
`
`
`For Patent Owner:
`
`Eric Maiers
`maierse@gtlaw.com
`
`Michael Nicodema
`nicodema@gtlaw.com
`
`James Lukas
`lukasj@gtlaw.com
`
`Robbie Harmer
`harmer@gtlaw.com
`
`
`
`15
`
`

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