Universal Remote Control Inc.v.Universal Electronics, Inc.

Patent Trial and Appeal Board

Nov 24, 2014

10403454 (P.T.A.B. Nov. 24, 2014)

Trials@uspto.gov Paper 9
571-272-7822 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

2
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
IPR2014-01112
Patent RE39,059 E

3
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
IPR2014-01112
Patent RE39,059 E

4
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
IPR2014-01112
Patent RE39,059 E

5
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).
IPR2014-01112
Patent RE39,059 E

6
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).
IPR2014-01112
Patent RE39,059 E

7
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
IPR2014-01112
Patent RE39,059 E

8
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.
IPR2014-01112
Patent RE39,059 E

9
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.
IPR2014-01112
Patent RE39,059 E

10
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
IPR2014-01112
Patent RE39,059 E

11
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
IPR2014-01112
Patent RE39,059 E

12
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
IPR2014-01112
Patent RE39,059 E

13
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).
IPR2014-01112
Patent RE39,059 E

14
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.

IPR2014-01112
Patent RE39,059 E

15
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