`
`
`
`Inter Partes Review United States
`Patent No. 5,802,467
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`United States Patent No.: 5,802,467
`Inventors:
`Joe Andrew Salazar,
`Luis Molero-Castro
`Formerly Application No.: 535,801
`Filing Date: September 28, 1995
`Issue Date: September 1, 1998
`Priority Date: September 28, 1995
`Former Group Art Unit: 2744
`Former Examiner: Myron Wyche
`
`
`For: Wireless and Wired Communications, Command, Control and Sensing
`System for Sound and/or Data Transmission and Reception
`
`§ Attorney Docket No.: 1984.092459
`§
`
`§ Customer No. 26290
`§ Petitioners:
`§ HTC Corp.;
`§ HTC America, Inc.
`§
`§
`§
`
`
`
`
`
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 5,802,467
`
`
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, the undersigned,
`
`on behalf of and acting in a representative capacity for petitioners HTC
`
`Corporation and HTC America, Inc. (collectively “HTC,” “Petitioners” and real
`
`parties in interest), hereby petition for inter partes review of claims 1-7, 10, 14,
`
`17, 23, 26-32, and 34 of U.S. Patent No. 5,802,467 (“the ‘467 patent”), issued to
`
`Joe Andrew Salazar et al. and currently assigned to Joe Andrew Salazar
`
`(“Salazar,” also referred to as “Applicant,” “Patent Owner,” or “Patentee”).
`
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`i
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`Inter Partes Review United States
`Patent No. 5,802,467
`Petitioners hereby assert that there is a reasonable likelihood that at least one of
`
`the Challenged Claims is unpatentable for at least the reasons set forth herein and
`
`respectfully request review of, and judgment against, claims 1-7, 10, 14, 17, 23,
`
`26-32, and 34 as unpatentable under 35 U.S.C. § 103.
`
`
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`ii
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`

`

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`
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`
`
`TABLE OF CONTENTS
`
`V.
`
`TABLE OF AUTHORITIES ....................................................................................... v
`LIST OF EXHIBITS .................................................................................................. vi
`I.
`INTRODUCTION ............................................................................................ 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ..................................... 1
`III. PETITIONERS HAVE STANDING ................................................................ 2
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................... 2
`B.
`Claims and Statutory Grounds Under 37 C.F.R. § 42.22 and §§
`42.104(b) ................................................................................................ 3
`IV. SUMMARY OF THE ‘467 PATENT .............................................................. 3
`A. Overview of the ‘467 Patent ................................................................... 3
`B.
`‘467 Patent Prosecution History ............................................................. 6
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONERS WILL
`PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF THE ‘467
`PATENT ........................................................................................................... 7
`A.
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ............................. 7
`1. base station ....................................................................................... 8
`2. a microprocessor for generating a plurality of control signals used
`to operate said system, said microprocessor creating a plurality of
`reprogrammable communication protocols ............................................ 8
`3. a memory device coupled to said microprocessor configured to
`store a plurality of parameter sets retrieved by said microprocessor so
`as to recreate a desired command code set, such that the memory space
`required to store said parameters is smaller than the memory space
`required to store said command code sets .............................................. 9
`4. . a memory device coupled to said microprocessor configured to store
`a plurality of parameter sets retrieved by said microprocessor so as to
`recreate based on said parameter sets a desired set of pulse signals
`corresponding to logical “1’s” and “0’s” as specified by a command
`code set ................................................................................................... 9
`5. a selector controlled by said microprocessor for enabling said radio
`
`
`
`iii
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`

`
`
`
`
`
`
`B.
`
`frequency transceiver and said infra-red frequency transceiver to
`transmit a desired command code set generated by said microprocessor
`via either radio frequency signals and infra-red signals as desired, and
`to receive a signal from any one of said external devices via either
`radio frequency signals and infra-red signals....................................... 10
`6. external device ................................................................................ 10
`Level of Ordinary Skill in the Art and State of the Art ........................ 10
`1. Overview of U.S. Patent No. 5,410,326 (“Goldstein”) ................... 11
`2. Overview of U.S. Patent No. 4,866,434 (“Keenan”) ...................... 15
`3. Overview of U.S. Patent No. 5,465,401 (“Thompson”) ................ 18
`4. Motivation to Combine Goldstein, Keenan, and Thompson .......... 19
`C. Ground 1: Claims 1-7, 10, 17, 23, 26-32, and 34 Are Obvious Over
`Goldstein in View of Keenan ............................................................... 20
`D. Ground 2: Claim 14 is Obvious Over Goldstein in View of Keenan and
`Thompson ............................................................................................. 55
`VI. CONCLUSION ............................................................................................... 56
`
`iv
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`

`
`
`Inter Partes Review
`United States Patent No. 5,802,467
`
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`CASES
`
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................... 7
`
`In re CSB-System Int’l, Inc., 832 F.3d 1341 (Fed. Cir. 2016) ................................... 8
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) .................................. 11, 20
`
`Dystar Textilfarben GMBH v. C.H. Patrick Co., 464 F.3d 1356
`(Fed. Cir. 2006) ............................................................................................. 19
`
`STATUTES
`
`35 U.S.C. § 102 ................................................................................................. passim
`35 U.S.C. § 103 ................................................................................................. passim
`35 U.S.C. § 311 ........................................................................................................... i
`35 U.S.C. § 312 ........................................................................................................... i
`35 U.S.C. § 313 ........................................................................................................... i
`35 U.S.C. § 314 ....................................................................................................... i, 7
`35 U.S.C. § 315 ........................................................................................................... i
`35 U.S.C. § 316 ........................................................................................................... i
`35 U.S.C. § 317 ........................................................................................................... i
`35 U.S.C. § 318 ........................................................................................................... i
`35 U.S.C. § 319 ........................................................................................................... i
`
`OTHER AUTHORITIES
`
`Ubisoft Entertainment SA v. Princeton Digital Image Corp., IPR2014-00635, Paper
`No. 24 at 9 (PTAB October 26, 2015). ......................................................... 8
`37 C.F.R. § 1.33(c) .................................................................................................. 57
`37 C.F.R. § 15(a) ..................................................................................................... 57
`37 C.F.R. § 42 ............................................................................................................. i
`37 C.F.R. § 42.8 ......................................................................................................... 1
`37 C.F.R. § 42.15 ..................................................................................................... 57
`37 C.F.R. § 42.22 ....................................................................................................... 3
`37 C.F.R. § 42.24 ..................................................................................................... 59
`37 C.F.R. § 42.100 ................................................................................................... 57
`37 C.F.R. § 42.104 ............................................................................................. 2, 3, 7
`37 C.F.R. § 42.105 ................................................................................................... 57
`
`
`
`v
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`

`

`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`
`
`
`
`
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`
`
`Inter Partes Review United States
`Patent No. 5,802,467
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 5,802,467 (“the ‘467 patent”)
`U.S. Patent No. 5,802,467 File History
`Declaration of Dr. Andrew Wolfe
`U.S. Patent No. 5,410,326 (“Goldstein”)
`U.S. Patent No. 4,866,434 (“Keenan”)
`U.S. Patent No. 5,465,401 (“Thompson”)
`Claim Construction Opinion and Order, Joe Andrew Salazar v.
`HTC Corporation et al., No. 2:16-cv-01096-JRG-RSP (E.D.
`Tex.), Dkt. No. 108 (November 3, 2017)
`Plaintiff’s Opening Claim Construction Brief, Joe Andrew Salazar
`v. HTC Corporation et al., No. 2:16-cv-01096-JRG-RSP (E.D.
`Tex.), Dkt. No. 85 (September 7, 2017)
`Defendant’s Responsive Claim Construction Brief, Joe Andrew
`Salazar v. HTC Corporation et al., No. 2:16-cv-01096-JRG-RSP
`(E.D. Tex.), Dkt. No. 91 (September 20, 2017)
`Plaintiff’s Reply to Claim Construction Brief, Joe Andrew Salazar
`v. HTC Corporation et al., No. 2:16-cv-01096-JRG-RSP (E.D.
`Tex.), Dkt. No. 94 (September 26, 2017)
`Defendant’s Surreply to Plaintiff’s Reply to Claim Construction
`Brief, Joe Andrew Salazar v. HTC Corporation et al., No. 2:16-
`cv-01096-JRG-RSP (E.D. Tex.), Dkt. No. 97 (October 2, 2017)
`
`vi
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`
`
`I.
`
`INTRODUCTION
`
`Inter Partes Review United States
`Patent No. 5,802,467
`
`The Challenged Claims of the ‘467 patent generally relate to a wireless
`
`remote control system used to control external devices and a scheme to reduce the
`
`storage space required to store command codes for the various external devices.
`
`There is nothing new in the claims of the ‘467 patent. As set forth in
`
`this Petition, the supposed “invention” in each of claims 1-7, 10, 14, 17, 23, 26-
`
`32, and 34 (the “Challenged Claims”) was well-known and obvious prior to the
`
`application filing date listed on the front of the ‘467 patent (i.e., September 28,
`
`1995). Specifically, the Challenged Claims require a microprocessor, a memory
`
`device, a user interface, and an infrared frequency transceiver. Command code
`
`sets define the signals that are used to communicate with the external devices. The
`
`Challenged Claims store parameter sets that recreate the desired command code
`
`sets and that are stored in a memory space that is smaller than the memory space
`
`required to store the command code sets.
`
`As demonstrated in this Petition, each and every element of the
`
`Challenged Claims has been disclosed in the prior art and the Challenged
`
`Claims are nothing more than a routine and predictable combination of these
`
`well-known elements. Thus, each of the Challenged Claims is invalid under 35
`
`U.S.C. § 103.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
`1
`
`

`

`
`
`Inter Partes Review United States
`Patent No. 5,802,467
`Notices Under 37 C.F.R. § 42.8(b)(1), (b)(3), & (b)(4): The real parties-in-
`
`interest are HTC Corporation and HTC America, Inc. (collectively “HTC”). Lead
`
`counsel, backup counsel, and service information for each petitioner are
`
`designated as follows: B. Todd Patterson (Lead Counsel), Reg. No. 37,906,
`
`tpatterson@pattersonsheridan.com, P: 713-577-4801/F: 713-623-4846; Jerry R.
`
`Selinger (Backup Counsel), Reg. No. 26,582, jselinger@pattersonsheridan.com,
`
`P: 214-272-0957/F: 214-296-0246; Mailing address for all PTAB correspondence:
`
`PATTERSON & SHERIDAN, LLP, 24 Greenway Plaza, Ste. 1600, Houston, TX
`
`77046.
`
`
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2): Salazar is currently
`
`asserting claims 1-7, 10, 14, 17, 23, 26-32, and 34 of the ‘467 patent against
`
`Petitioner HTC Corporation in Joe Andrew Salazar v. HTC Corporation, 2:16-cv-
`
`1096 (EDTX).
`
`III. PETITIONERS HAVE STANDING
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘467
`
`patent is eligible for inter partes review and that Petitioners are not barred or
`
`estopped from requesting inter partes review of the ‘467 patent. Petitioner HTC
`
`Corporation was served with a complaint asserting infringement of the ‘467
`
`patent on or after December 5, 2016, and no Petitioner, real party-in-interest, or
`
`
`
`2
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`

`
`
`Inter Partes Review United States
`Patent No. 5,802,467
`privy of a Petitioner was served with such a complaint before that date. The
`
`Petitioners and real parties-in-interest have not initiated a civil action challenging
`
`validity of the ‘467 patent.
`
`B. Claims and Statutory Grounds Under 37 C.F.R. § 42.22 and §§
`42.104(b)
`Petitioners request inter partes review of claims 1-7, 10, 14, 17, 23, 26-32,
`
`and 34 of the ‘467 patent and assert that these claims are unpatentable based on
`
`one or more grounds under 35 U.S.C. § 103 as set forth below.
`
`• Ground 1: Goldstein (Ex. 1004) in view of Keenan (Ex. 1005) renders ‘467
`
`claims 1-7, 10, 17, 23, 26-32, and 34 obvious under 35 U.S.C. § 103.
`
`• Ground 2: Goldstein (Ex. 1004) in view of Keenan (Ex. 1005) and
`
`Thompson (Ex. 1006) renders ‘467 claim 14 obvious under 35 U.S.C. § 103.
`
`Section V below provides claim charts specifying how the cited prior art
`
`relied upon renders obvious each of the Challenged Claims, as confirmed by
`
`the knowledge and understanding of a POSITA at the time of the claimed
`
`invention as evidenced in Ex. 1003, the Wolfe Declaration.
`
`IV. SUMMARY OF THE ‘467 PATENT
`A. Overview of the ‘467 Patent
`The ‘467 specification generally describes a system for communicating
`
`wirelessly with external devices using infrared (IR) or radio frequency (RF)
`
`signals. A system includes a handset device and a base station for communication
`
`
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`3
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`Inter Partes Review United States
`Patent No. 5,802,467
`of sound, voice, and data to perform telephone communications, remote command
`
`and control of appliances, intercom operations, and security functions. See Ex.
`
`1001 at 6:31-38. The handset may communicate with the base station or with
`
`external devices, such as TVs, VCRs, cable boxes, sound systems, etc. See id.,
`
`6:39-45. The base station may communicate through a telephone line and/or an
`
`alternating current (AC) signal power line to any other apparatus having the ability
`
`to communicate through the same. See id., 6:48-51.
`
`Figure 3 of the ‘467 patent illustrates a block diagram of the electronic
`
`components of a handset device. See id., 19:52-56.
`
`RF operation is accomplished through the RF transceiver 50 and RF/IR
`
`selector 52. See id., 20:2-5. IR operation is accomplished through IR transceiver
`
`
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`4
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`Inter Partes Review United States
`Patent No. 5,802,467
`60 and RF/IR selector 52. Command and control signals are initialized by
`
`touching a touch screen, and the microprocessor actuates internal circuits or causes
`
`changes in setting in external devices. See id., 4:44-49. In another aspect,
`
`command and control signals are initialized by voice commands. See id., 4:49-51.
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`External devices are controlled in response to a radio or IR command and control
`
`signal transmitted by the wireless system. See id., 4:61-64. Passive external
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`devices receive the control signals and perform an action. See id., 4:65-67.
`
`A handset that communicates with all major brands of various devices
`
`ostensibly requires a substantially large memory to store all of the various
`
`command code sets. See id., 7:55-60. The supposed invention of the ‘467 patent is
`
`described as an encoding technique to store desired communication signals in a
`
`memory space on the order of 10Kbytes of data. See id., 8:17-21. A
`
`microprocessor retrieves data from a memory device that is configured to store a
`
`finite set of parameters that may be used to recreate and generate signals
`
`corresponding to a desired command code set. See id., 8:22-28. These parameters
`
`take less memory space than if the entire command codes sets were stored. See id.,
`
`8:28-30.
`
`Claim 1 is directed to a system that includes a microprocessor, a memory
`
`device, a user interface, and an infrared frequency transceiver. These components
`
`were well known more than one year before the filing date of the application
`
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`5
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`Inter Partes Review United States
`Patent No. 5,802,467
`leading to the ‘467 patent. In addition, storing a compressed representation of data
`
`to save space was also well known in the art, as shown herein. Other Challenged
`
`Claims recite a radio frequency transceiver, a selector, a touch sensitive device, a
`
`user interface, and a sensor. The prior art references discussed herein disclose all
`
`of the above features or concepts as already well known in the art. As detailed
`
`below, the Applicants did not invent anything beyond what was already well
`
`understood in the art at the time of their earliest claimed priority date.
`
`‘467 Patent Prosecution History
`
`B.
`The application leading to the ‘467 patent was filed on September 28,
`
`1995 with 37 claims. On May 1, 1997, the Examiner issued an Office Action,
`
`rejecting independent claims 1 and 10 as being unpatentable under 35 U.S.C. §
`
`103(a) over three prior art references. The dependent claims were also rejected as
`
`being unpatentable under 103(a) over the three prior art references in combination
`
`with other prior art references. See Ex. 1002 at 154-181.
`
`In response to the Office Action, Applicants filed an Amendment on
`
`November 3, 1997. In the Amendment, Applicants added the “memory device”
`
`limitation to independent claims 1 and 10, and made various other amendments to
`
`the dependent claims. See id. at 185-191. Applicants also added eight new
`
`claims. See id. Applicants argued that “[t]here is no selector in Krisbergh that
`
`allows communication with external devices in a dual frequency range as selected
`
`
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`6
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`
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`by the user.” See id. at 197.
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`Inter Partes Review United States
`Patent No. 5,802,467
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`On February 19, 1998, the Examiner issued a Notice of Allowance,
`
`allowing all of the pending claims. See id. at 203.
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONERS
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ‘467 PATENT
`
`Petitioners submit there is at least “a reasonable likelihood that the
`
`petitioners would prevail with respect to at least 1 of the claims challenged
`
`in the petition.” 35 U.S.C. § 314(a). Indeed, all of the Challenged Claims of
`
`the ‘467 patent are unpatentable as invalid under the requirements of 35 U.S.C.
`
`§ 103 because they are obvious in light of the prior art, as explained below.
`
`Specifically, this petition relies on two primary references, Goldstein and
`
`Keenan. These references were not cited during original prosecution of the ‘467
`
`patent, and thus were never previously considered by the USPTO. As detailed
`
`below, pursuant to 37 C.F.R. § 42.104(b)(4)-(5), all of the Challenged Claims are
`
`unpatentable.
`
`A. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`Pursuant
`to § 42.100(b), and solely for purposes of
`
`this review,
`
`Petitioners construe the claim language such that the terms are given “the
`
`meaning that [a] term would have to a person of ordinary skill in the art in question
`
`at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`
`
`
`7
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`Inter Partes Review United States
`Patent No. 5,802,467
`2005) (en banc). The ‘467 patent is expired, and thus the standard set forth in
`
`Phillips applies in this proceeding. See e.g., In re CSB-System Int’l, Inc., 832 F.3d
`
`1335, 1341 (Fed. Cir. 2016); Ubisoft Entertainment SA v. Princeton Digital Image
`
`Corp., IPR2014-00635, Paper No. 24 at 9 (PTAB October 26, 2015).
`
`The Court in Joe Andrew Salazar v. HTC Corporation, 2:16-cv-1096
`
`(EDTX) issued a Claim Construction Opinion and Order on November 3, 2017.
`
`See Ex. 1007. This Order construed a number of claim terms under the standard
`
`set forth in Phillips. The terms in the ‘467 patent claims have been given their
`
`plain and ordinary meaning in the Court’s Claim Construction Opinion and Order,
`
`with the exceptions set forth below. For the purposes of this Petition, and without
`
`waiving any objections that Petitioners may have to these claim constructions in
`
`litigation, the Court’s claim constructions are applied herein.
`
`1.
`
`base station
`
`The term appears in claim 10 and its various dependent claims. The Court
`
`construed the term “base station” to mean “a device separate from the handset that
`
`has a telephone line interface.” See Ex. 1007, p. 15.
`
`2.
`
`a microprocessor for generating a plurality of control
`signals used to operate said system, said microprocessor
`creating a plurality of reprogrammable communication
`protocols
`
`This term appears in claims 1, 10, and 34. The Court construed this term to
`
`mean “a microprocessor configured to generate a plurality of control signals used
`
`
`
`8
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`Inter Partes Review United States
`Patent No. 5,802,467
`to operate said system and configured to create a plurality of [reprogrammable]
`
`communication protocols.” See Ex. 1007, p. 22.
`
`3.
`
`a memory device coupled to said microprocessor configured
`to store a plurality of parameter sets retrieved by said
`microprocessor so as to recreate a desired command code
`set, such that the memory space required to store said
`parameters is smaller than the memory space required to
`store said command code sets
`
`This term appears in claims 1 and 10. The Court construed this term to
`
`mean “memory device coupled to said microprocessor configured to store a
`
`plurality of parameter sets retrieved by said microprocessor so as to recreate, by
`
`the microprocessor, a desired command code set, such that the memory space
`
`required to store said parameters is smaller than the memory space required to
`
`store said command code sets.” See Ex. 1007, p. 30.
`
`4.
`
`a memory device coupled to said microprocessor configured
`to store a plurality of parameter sets retrieved by said
`microprocessor so as to recreate based on said parameter
`sets a desired set of pulse signals corresponding to logical
`“1’s” and “0’s” as specified by a command code set
`
`This term appears in claim 34. The Court construed this term to mean “a
`
`memory device coupled to said microprocessor configured to store a plurality of
`
`parameter sets retrieved by said microprocessor so as to recreate, by the
`
`microprocessor, based on said parameter sets a desired set of pulse signals
`
`corresponding to logical “1’s” and “0’s” as specified by a command code set.” See
`
`Ex. 1007, p. 30.
`
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`9
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`5.
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`Inter Partes Review United States
`Patent No. 5,802,467
`a selector controlled by said microprocessor for enabling
`said radio frequency transceiver and said
`infra-red
`frequency transceiver to transmit a desired command code
`set generated by said microprocessor via either radio
`frequency signals and infra-red signals as desired, and to
`receive a signal from any one of said external devices via
`either radio frequency signals and infra-red signals
`
`This term appears in claims 2 and 10. The Court construed this term to
`
`mean “a selector controlled by said microprocessor for enabling said radio
`
`frequency transceiver and said infra-red frequency transceiver to transmit a desired
`
`command code set generated by said microprocessor via either radio frequency
`
`signals and infra-red signals as selected by a user, and to receive a signal from any
`
`one of said external devices via either radio frequency signals and infra-red
`
`signals.” See Ex. 1007 at p. 36.
`
`6.
`
`external device
`
`
`
`This term appears in claims 1, 10, and 34. The Court construed this term to
`
`mean “a device separate from the handset and the base station.” See Ex. 1007 at p.
`
`57.
`
`Claim construction briefing from both the Patent Owner and the Petitioner
`
`has been attached as Exhibits 1008-1011.
`
`Level of Ordinary Skill in the Art and State of the Art
`
`B.
`“A person of ordinary skill in the art is a person of ordinary creativity, not
`
`an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). “[I]n
`
`
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`10
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`Inter Partes Review United States
`Patent No. 5,802,467
`many cases a person of ordinary skill will be able to fit the teachings of multiple
`
`patents together like pieces of a puzzle.” Id. at 420. More specifically, a person of
`
`ordinary skill in the art relating to the technology of the ‘467 patent at the time at
`
`which the patent application was filed (September 28, 1995) would have had a
`
`Bachelor’s degree in Electrical Engineering or Computer Science, or an
`
`equivalent field, and approximately two years of experience in working with
`
`electronic devices that employ infrared and/or radio frequency communications or
`
`the equivalent. Ex. 1003 at [18-20].
`
`Overview of U.S. Patent No. 5,410,326 (“Goldstein”)
`
`1.
`U.S. Patent No. 5,410,326 to Goldstein, entitled “Programmable Remote
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`Control Device for Interacting with a Plurality of Remotely Controlled Devices,”
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`was filed on December 4, 1992, and issued on April 25, 1995, making it prior
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`art to the ‘467 patent under at least 35 U.S.C. § 102(e) (pre-AIA). Goldstein
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`describes a universal remote control device that is programmed to operate a
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`variety of consumer products. Ex. 1004 at Abstract. The device includes a touch
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`display for displaying icons of functions to be selected by a user. See id. By
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`selecting a particular icon, a command can be decoded and sent via an infrared
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`link to one or more devices. See id. The device can acquire infrared codes for a
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`virtually unlimited number of devices. See id.
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`The universal programmable remote control described by Goldstein is
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`bidirectional, in that it can receive data for programming the remote control
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`through an interface as well as issue commands to one or more external devices to
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`be controlled. See id., 3:14-21. The remote control can connect to a remote
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`source of programming to receive operating codes for the external devices. See
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`id., 3:24-28. As consumers may have a variety of devices requiring different
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`infrared codes, the subscriber can receive these different codes from a cable
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`television facility as part of that facility’s device programming service. See id.,
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`3:61-67. Alternatively, the device may be programmed via a telephone coupled to
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`a remotely connected programming source. See id., 3:67-4:1. The touch screen
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`display of the remote control device is capable of producing icon menus, so that a
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`user can scroll through layers of various functions and select a particular device
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`and/or programming service. See id., 4:6-10.
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`Figure 1A illustrates a system block diagram of the remote control device:
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`The remote control device includes three input ports comprising an optical
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`input port 26, an IR signal input port 27 and an audio input port 28. FM
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`bidirectional communication link 30, 31 links the cable converter 6 and telephone
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`interface 25 with the remote control device 5. See id., 7:42-50. Data can enter the
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`remote control device through any of multiple input ports 26, 27, and 28. See id.,
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`7:56-58. Data can also be conveyed via the bidirectional link to/from a telephone
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`interface 25. See id., 7:58-60. Remote control commands are transmitted to the
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`controlled devices via the infrared output port 29. See id., 7:53-55.
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`Figure 10 illustrates a block diagram of the remote control device:
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`The bidirectional communications link comprises a frequency modulation
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`transmitter 85, antenna 86, antenna 88, and a frequency modulation receiver 87.
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`See id., 12:13-20. Various forms of data may be received by a microprocessor 89,
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`such as a Motorola 68000 processor. See id., 12:34-36. Touching an icon on the
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`touch screen display is encoded as a digital selection to the microprocessor 89.
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`See id., 12:48-53. A capacitance receiver 92 responds to handling of the remote
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`control device. The capacitance receiver 92 generates a power on/off signal for
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`the device so that as soon as a user handles the device, the unit is fully powered
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`and operational. See id., 12:54-61.
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`The remote control device is programmable through either the bidirectional
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`communication link or through an IR link. See id., 13:47-50.
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`Overview of U.S. Patent No. 4,866,434 (“Keenan”)
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`2.
`U.S. Patent No. 4,866,434 to Keenan, entitled “Multi-Brand Universal
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`Remote Control,” was filed on December 22, 1988 and issued on September 12,
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`1989, making it prior art to the ‘467 patent under at least 35 U.S.C. § 102(b)
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`(pre-AIA). Keenan describes a universal remote control handunit that stores
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`compressed device control codes to make efficient use of available memory space.
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`Ex. 1005 at Abstract. IR remote controls can control any one of a number of
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`consumer electronics products from different manufacturers utilizing different
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`remote control signal code formats. See id., 1:11-20. The number of different
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`remote control signal formats that can be handled by a universal remote control is
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`dependent upon the amount of memory available for IR code storage. See id.,
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`1:21-25.
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`Keenan also describes two basic approaches to universal remote control
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`handunits. A volatile memory (RAM) based system is also known as a “learning”
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`remote control handunit. See id., 1:26-29. With this type of remote control, the
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`user teaches the handunit desired functions from another handunit. See id., 1:29-
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`31. This is accomplished by switching the learning remote control handunit to a
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`learning mode and physically orienting the two handunits so that the learning
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`remote control handunit can receive the IR transmissions of the handunit to be
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`emulated. See id., 1:31-36. The IR transmission is recorded as it is received by the
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`learning remote control. After this initial storage of the raw data, the raw data is
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`analyzed and compressed, and then the compressed version of the data is stored.
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`See id., 1:36-41. When the universal remote control handunit is used in the remote
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`control mode to transmit a command, the stored compressed codes are recalled
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`from memory, decompressed, and the resulting signal is transmitted. See id., 1:41-
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`45.
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`The second type of system described by Keenan is a nonvolatile (ROM)
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`based system that is restricted to a fixed set of devices. See id., 1:46-49. In such a
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`handunit, all of the different code formats for all of the functions of each device to
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`be controlled must be programmed beforehand, and these functions are usually
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`compressed in some manner to occupy as little memory space as possible. See id.,
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`1:49-54. With each technique, the more efficient the compression technique used,
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`the more functions can be stored. See id., 1:55-57.
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`Keenan describes compression techniques that are based on identifying
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`common attributes found in many remote control IR code formats. See id., 2:7-11.
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`Storing IR data in the manner illustrated in Figure 1 provides improvement in
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`memory