Universal Electronics, Inc.

Patent Trials and Appeals Board

May 12, 2021

IPR2019-01620 (P.T.A.B. May. 12, 2021)

Trials@uspto.gov Paper 39
571-272-7822 Entered: May 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ROKU, INC.,
Petitioner,

v.

UNIVERSAL ELECTRONICS, INC.,
Patent Owner.
____________

IPR2019-01620
Patent 7,821,505 B2
____________

Before PATRICK M. BOUCHER, MINN CHUNG, and
SHARON FENICK, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
In this inter partes review (“IPR”), instituted pursuant to 35 U.S.C.
§ 314, Roku, Inc. (“Petitioner”) challenges the patentability of claims 5–7, 9,
10, 12, 49, and 51 (the “challenged claims”) of U.S. Patent No. 7,821,505
B2 (Ex. 1001, “the ’505 patent”),1 owned by Universal Electronics, Inc.
(“Patent Owner”). This Final Written Decision is entered pursuant to
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
we determine Petitioner has shown by a preponderance of the evidence that
claims 5–7, 9, 10, 12, 49, and 51 of the ’505 patent are unpatentable.
II. BACKGROUND
A. Procedural History
On September 18, 2019, Roku, Inc. (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of the challenged claims
of the ’505 patent. Patent Owner filed a Preliminary Response (Paper 6,
“Prelim. Resp.”).
On May 13, 2020, applying the standard set forth in 35 U.S.C.
§ 314(a), which requires demonstration of a reasonable likelihood that
Petitioner would prevail with respect to at least one challenged claim, we
instituted an inter partes review of all challenged claims of the ’505 patent
based on all grounds presented in the Petition. Paper 12 (“Inst. Dec.”), 45–
46.

1 Claims 49 and 51 were added to the ’505 patent as a result of an inter
partes reexamination of the ’505 patent. Ex. 1003 (Inter Partes
Reexamination Certificate No. US 7,821,505 C1), 1:19–20, 3:46–50, 3:54–
57.
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After institution, Patent Owner filed a Patent Owner Response
(Paper 17, “PO Resp.”), Petitioner filed a Corrected Reply to the Patent
Owner Response (Paper 20, “Pet. Reply”), and Patent Owner filed a
Corrected Sur-reply (Paper 23, “PO Sur-reply”). An oral hearing was held
on February 4, 2021, and a copy of the hearing transcript has been entered
into the record. Paper 38 (“Tr.”). After the hearing, with the Board
authorization (Paper 34), the parties filed supplemental briefing to address
alleged improper new arguments and evidence included in Petitioner’s
Reply. Papers 36, 37.
B. Related Matters
According to Petitioner, the ’505 patent has been asserted in the
following patent infringement cases: Universal Electronics, Inc. v. Logitech
Inc., 8-11-cv-01056 (C.D. Cal. 2011) (terminated); Universal Electronics,
Inc. v. Peel Technologies, Inc., 8-13-cv-01484 (C.D. Cal. 2013)
(terminated); and Universal Electronics, Inc. v. Roku, Inc., 8:18-cv-01580
(C.D. Cal. 2018) (pending) (“the related litigation”). Pet. 1–2. Patent
Owner identifies the same cases as related matters. Paper 3, 2.
The ’505 patent is one of several patents owned by Patent Owner that
are challenged by Petitioner in various petitions for inter partes review,
including in IPR2019-01595, IPR2019-01608, IPR2019-01612, IPR2019-
01613, IPR2019-01614, IPR2019-01615, IPR2019-01619, and IPR2019-
01621. See id. The parties also note that the ’505 patent has been the
subject of Inter Partes Reexamination No. 95/001,761 (“the ’505 Patent
Reexamination Proceeding” or “the ’505 Patent Reexamination”) (Pet. 2;
Paper 3, 3), which confirmed the patentability of claims 1–12 (Ex. 1003,
1:17).
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C. The ’505 Patent
The ’505 patent, titled “CONTROLLING DEVICE WITH DUAL-
MODE, TOUCH-SENSITIVE DISPLAY,” issued October 26, 2010, from
U.S. Patent Application No. 12/797,695, filed June 10, 2010 (“the ’695
application”). Ex. 1001, codes (21), (22), (45), (54). The ’695 application is
a continuation of U.S. Patent Application 12/103,895, filed on April 16,
2008 (issued as U.S. Patent No. 7,782,309 (“the ’309 patent”)), which is a
continuation of U.S. Patent Application No. 11/290,358, filed on November
30, 2005 (issued as U.S. Patent No. 7,432,916). Id. at code (63). The ’505
patent also claims the benefit of U.S. Provisional Patent Application No.
60/634,680, filed on December 9, 2004. Id. at code (60).
The ’505 patent describes a universal controlling device having a
dual-mode, touch-sensitive display. Id. at 1:16–18, 2:12–15.
Figure 2 of the ’505 patent is reproduced below.

Figure 2 depicts an exemplary universal controlling device of the
’505 patent. Id. at 2:39–41.
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As shown in Figure 2, universal controlling device 100 comprises
dual-mode touch-sensitive display 504 and hard keys (or mechanical
buttons) 342. Id. at 4:41–47, 4:57–60. In an embodiment, mechanical
buttons 324 include pointer mode activation button 512, which is used to
toggle universal controlling device 100 between a first operational mode and
a second operational mode, also called the pointer control mode. Id. at
5:38–42. According to the ’505 patent, in the first operational mode,
universal controlling device 100 is used to command conventional
operational functions of home appliances. Id. at 5:17–19. In the second
operational mode, universal controlling device 100 accepts input from a user
to “control[] a cursor or pointer on a larger, second device, such as a
personal computer, television, or the like.” Id. at 2:54–58.
Figure 3 of the ’505 patent is reproduced below.

Figure 3 illustrates an exemplary system environment in which the
exemplary universal controlling device of Figure 2 may be utilized. Id. at
2:42–44.
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As depicted in Figure 3, universal controlling device 100 can be used
to command functional operations of various appliances typically found in a
home entertainment center, such as VCRs 400, DVD and CD players 402,
cable set-top boxes and satellite receivers 404, AV receivers 406,
television 408, and home theater personal computer (“HTPC”) 410. Id. at
4:14–25. The ’505 patent describes that HTPC 410 is typically a PC that is
set up at the home entertainment center and is used for home entertainment
functions, such as playing back music and video files, playing DVDs, and
viewing digital photos. Id. at 4:25–29.
The ’505 patent further describes that, in the first operational mode,
universal controlling device 100 may be used to select a specific media
playback device, such as DVD player 402, as the input to AV receiver 406,
resulting in the display of the DVD output on TV 408. Id. at 5:17–23. In
addition, the operation of DVD player 402, AV receiver 406, TV 408, etc.,
may be controlled by using soft buttons displayed on display 504, as well as
mechanical buttons 342, of universal controlling device 100. Id. at 5:23–26.
For example, when operating in the first operational mode, the application
software of universal controlling device 100 presents on display 504 a
graphical user interface comprised of icons to control one or more of a
plurality of audio-visual equipment (target devices), including a TV, VCR,
DVD, satellite box, AV receiver, and a HTPC. Id. at 5:8–14. The ’505
patent describes that when the user activates a mechanical button or soft
button, a command code specific to an operational function on a specific
target device is sent to the target device. Id. at 5:30–34.
According to the ’505 patent, in the second operational mode, i.e., the
pointer control mode, the touch-sensitive digitizing sub-system on universal
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controlling device 100 is used as a “mousing (pointer control) input device”
for HTPC 410. Id. at 5:35–38.
Figure 4 of the ’505 patent is reproduced below.

Figure 4 illustrates an exemplary flow of data within the exemplary system
environment of Figure 3. Id. at 2:45–46. As depicted in Figure 4,
communications with HTPC 410 may be made by means of USB RF
transceiver and converter 412, which receives and converts a data-stream
transmitted by universal controlling device 100 into USB messages for
HTPC 410. Id. at 4:34–40.
The ’505 patent describes that when universal controlling device 100
is placed into the pointer control mode, position information output from the
touch-sensitive digitizer sub-system is converted into a data-stream, which is
sent via a transmitter to receiver and converter 412 connected to a USB port
on HTPC 410. Id. at 5:48–53. The ’505 patent further describes that USB
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receiver and converter 412 converts the received data-stream into mouse
position messages that are sent to the Windows operating system of
HTPC 410 via the USB connection. Id. at 5:53–56. According to the
’505 patent, HTPC 410 may then use the data provided by the
touch-sensitive digitizing sub-system of universal controlling device 100 in
the same way as data received from a USB mouse to control the movement
of a displayed pointer. Id. at 5:56–60. Referencing Figure 4, the ’505 patent
describes that, as illustrated in Figure 4, when stylus 506 is moved across
dual-mode display 504, displayed pointer 420 is moved in a corresponding
direction on HTPC desktop 422 displayed on TV 408. Id. at 5:60–63. The
’505 patent refers to HTPC desktop 422 as “HTPC GUI [graphical user
interface] desktop 422.” Id. at 5:63–6:2.
D. Illustrative Claim
Independent claim 5 is illustrative of the challenged claims and is
reproduced below with bracketing used by Petitioner.
5. A non-transitory computer-readable media embodied in a
physical memory device having stored thereon instructions for
causing a universal controlling device comprised of a display
having a touch-sensitive surface and adapted to transmit data to
one or more appliances located remotely from the controlling
device to perform steps comprising:
[5.1] displaying in the display of the universal controlling device
one or more graphical user interfaces comprised of graphical
user interface icons;
[5.2] accepting via the touch-sensitive surface of the universal
controlling device a first input type indicative of a selection
of a displayed graphical user interface icon;
[5.3] initiating a transmission by the universal controlling device
to the one or more appliances first data representative of the
displayed graphical user interface icon selected by the first
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input type;
[5.4] accepting via the touch-sensitive surface of the universal
controlling device a second input type indicative of a motion
made across the touch-sensitive surface;
[5.5] initiating a transmission by the universal controlling device
to the one or more appliances second data representative of
the motion made across the touch-sensitive surface provided
by the second input type; and
[5.6] allowing the universal controlling device to distinguish the
first input type received via the touch-sensitive surface from
the second input type received via the touch-sensitive surface.
Ex. 1001, 7:50–8:21.
E. Evidence
1. Applied References
Petitioner relies upon the following references in its challenges
to patentability.
Reference Date Designation Exhibit No.
U.S. Patent No. 6,407,779 B1
Issued
June 18, 2002
Herz 1006
European Patent Application
Publication No. 0536554 A1
Published
Apr. 14, 1993
Zetts 1007
U.S. Patent No. 6,025,841
Issued
Feb. 15, 2000
Finkelstein2 1008
U.S. Patent No. 6,285,357 B1
Issued
Sept. 4, 2001
Kushiro 1016

2 For clarity and ease of reference, we only list the first named inventor.
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2. Testimonial Evidence
Petitioner relies on two Declarations from Nathaniel Polish, Ph.D. in
support of its Petition and Reply. Ex. 1004 (“Polish Declaration”); Ex. 1024
(“Polish Reply Declaration”). Patent Owner cross-examined Dr. Polish by
deposition. Ex. 2012 (“Polish Dep.”).
In support of its Patent Owner Response, Patent Owner relies on the
Declaration of Eric J. Gould Bear. Ex. 2007 (“Bear Declaration”).
Petitioner cross-examined Mr. Bear by deposition. Ex. 1028 (“Bear Dep.”).
F. Instituted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability (Pet. 12):
Claim(s) Challenged 35 U.S.C. § References/Basis
5–7, 9, 12, 51 103(a)3 Herz, Zetts
10 103(a) Herz, Zetts, Finkelstein
49 103(a) Herz, Zetts, Kushiro

We instituted an inter partes review of all challenged claims on all grounds
presented in the Petition. Inst. Dec. 45–46.

3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
’505 patent has an effective filing date prior to the effective date of the
applicable AIA amendment, we refer to the pre-AIA version of § 103.
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III. ANALYSIS
A. Relevant Principles of Law
To prevail in challenging Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
review], the petitioner has the burden from the onset to show with
particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
§ 312(a)(3) (requiring inter partes review petitions to identify “with
particularity . . . the evidence that supports the grounds for the challenge to
each claim”)). This burden never shifts to Patent Owner. See Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which the subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
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of skill in the art; and (4) where in evidence, so-called secondary
considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)); see Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
F.3d 1342, 1366–67 (Fed. Cir. 2012) (holding that “some kind of motivation
must be shown from some source, so that the [trier of fact] can understand
why a person of ordinary skill would have thought of either combining two
or more references or modifying one to achieve the patented [invention]”)).
Petitioner cannot satisfy its burden of proving obviousness by employing
“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016).
We analyze Petitioner’s asserted grounds based on obviousness with
the principles identified above in mind.
B. Level of Ordinary Skill in the Art and Petitioner’s Challenge to Patent
Owner’s Declarant Testimony
We begin our analysis by addressing the level of ordinary skill in the
art. Supported by the testimony of Dr. Polish, Petitioner proposes that a
person of ordinary skill in the art “would have had a bachelor’s degree in
electrical engineering, computer engineering, computer science, or a related

4 The parties do not address secondary considerations, which therefore do
not constitute part of our analysis.
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subject, and two to three years of work experience in software
programming.” Pet. 11 (citing Ex. 1004 ¶¶ 19–20). According to Petitioner,
“[l]ess experience can be remedied with additional education (e.g., a
master’s degree), and likewise, less education can be remedied with
additional work experience (e.g., 5–6 years).” Id. (citing Ex. 1004 ¶¶ 19–
20).
Patent Owner proposes instead that a person of ordinary skill in the art
would have had “(i) a bachelor’s degree that involved coursework in at least
user interface design and computer programming, and (ii) at least one year
of demonstrated real-world work experience in the field of computer user
interface design.” PO Resp. 8 (citing Ex. 2007 ¶ 52). According to Patent
Owner, “[a]dditional education might substitute for some of the experience,
and substantial experience, such as expertise in and appreciation of human
factors in computing systems sufficient to draft human-computer interaction
specifications, might substitute for some of the educational background.” Id.
(citing Ex. 2007 ¶ 52).
We adopt Petitioner’s articulation. Although Patent Owner asserts
that Petitioner’s proposed definition is overly broad because it omits critical
skills, such as human factors considerations (PO Resp. 9), Patent Owner’s
declarant, Mr. Bear, states that he performed his analysis from both points of
view of a person of ordinary skill in the art, as defined by Petitioner and
Patent Owner, and the differences between them did not affect his overall
conclusions (Ex. 2007 ¶ 56). Likewise, our analysis and conclusions in this
Final Written Decision would be the same regardless of whether Petitioner’s
or Patent Owner’s definition of the level of ordinary skill in the art is
adopted.
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Nonetheless, Petitioner asserts that a person of ordinary skill in the art
under Patent Owner’s proposed definition would not have understood “much
(if any) of the programing necessary to implement the techniques of the ’505
patent.” Pet. Reply 5. Petitioner argues that we should assign little weight
to Mr. Bear’s testimony because his analysis is performed from “an
unsuitable perspective.” Id. at 6. Patent Owner counters that Mr. Bear’s
testimony should be afforded substantial weight because Mr. Bear is
qualified under both parties’ proposed definitions of a person of ordinary
skill in the art. PO Sur-reply 24.
We are not persuaded by Petitioner’s argument. First, as discussed
above, Mr. Bear states that he performed his analysis from both points of
view of a person of ordinary skill in the art, as defined by Petitioner and
Patent Owner. See Ex. 2007 ¶ 56. Thus, we disagree with Petitioner’s
argument that Mr. Bear’s analysis is performed from “an unsuitable
perspective.” Second, to the extent the qualifications of Mr. Bear have been
called into question (see Tr. 33:2–3 (Petitioner’s counsel asserting that Mr.
Bear is “unqualified”)), we find that Mr. Bear qualifies as a person of at least
ordinary skill in the art under Petitioner’s definition, which states that “less
education can be remedied with additional work experience (e.g., 5–6
years).” Pet. 11 (citing Ex. 1004 ¶¶ 19–20). As stated in the Bear
Declaration, Mr. Bear’s work experience includes at least 9 years of
computer software programming using a variety of coding languages, such
as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2007
¶¶ 6–8. Thus, Mr. Bear is qualified to testify from the perspective of a
person of ordinary skill in the art under Petitioner’s definition of a person of
ordinary skill in the art, and we give Mr. Bear’s testimony due weight.
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C. Claim Construction
In an inter partes review, we apply the same claim construction
standard that would be used in a civil action under 35 U.S.C. § 282(b),
following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc). See Changes to the Claim Construction Standard
for Interpreting Claims in Trial Proceedings Before the Patent Trial and
Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
37 C.F.R. § 42.100(b) (2019)). In applying such standard, claim terms are
generally given their ordinary and customary meaning, as would be
understood by a person of ordinary skill in the art, at the time of the
invention and in the context of the entire patent disclosure. Phillips, 415
F.3d at 1312–13. “In determining the meaning of the disputed claim
limitation, we look principally to the intrinsic evidence of record, examining
the claim language itself, the written description, and the prosecution
history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
1312–17).
In the Institution Decision, we preliminarily construed two claim
terms recited in claim 5 as follows.
Term Construction
“second input type indicative of
a motion made across the touch-
sensitive surface”
“second input type indicative of
continuous contact from a first location to
a second location on the touch-sensitive
surface” (Inst. Dec. 21)
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Term Construction
“second data representative of
the motion made across the
touch-sensitive surface”
“second data representative of the
continuous contact from the first location
to the second location on the touch-
sensitive surface” (Inst. Dec. 21–24)

The parties agree with our preliminary construction of “second input
type indicative of a motion made across the touch-sensitive surface.”
Pet. 15; PO Resp. 15. Upon considering the complete record, we discern no
reason to deviate from our preliminary construction and, therefore, adopt the
construction as set forth above for this Final Written Decision.
As for the construction of the term “second data representative of the
motion made across the touch-sensitive surface,” the parties nominally agree
with our preliminary construction of the term as set forth above. See PO
Resp. 16; Pet. Reply 2, 4; PO Sur-reply 1. Petitioner argues, however, the
construction should not be further limited to require streaming of data,
indication of the path from the first location to the second location, or
transmission of data during the “second input” recited in claim 5. Pet. Reply
2–4. Patent Owner denies that it seeks such limiting constructions but
nonetheless argues that “data that indicates nothing more than the location
where a user terminates his or her dragging gesture on a touch screen display
cannot represent continuous contact from a first location to a second
location on a touch sensitive surface.” PO Sur-reply 1. Although the
parties’ dispute raises an issue of claim construction, the dispute is closely
related to the issue of whether Herz teaches the limitation “initiating a
transmission by the universal controlling device to the one or more
appliances second data representative of the motion made across the touch-
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sensitive surface provided by the second input type” recited in claim 5. See
PO Resp. 23–28; Pet. Reply 6–12; PO Sur-reply 1–6. Thus, for efficiency
and completeness, we address this issue in the context of the patentability
discussion below, Section III.E.2.d. As discussed below, we discern no
reason to deviate from our preliminary construction and, therefore, adopt the
construction as set forth above for this Final Written Decision.
Apart from the two terms discussed above, no other claim terms need
to be construed expressly for purposes of this Final Written Decision. See
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (holding that only terms that are in controversy need to be construed,
and “only to the extent necessary to resolve the controversy”); see also
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
review).
D. Scope and Content of the Prior Art
1. Overview of Herz (Ex. 1006)
Herz describes a universal remote control system (Ex. 1006, Abstr.)
“for remotely controlling various electronic devices such as television and
audio visual (‘AV’) systems using a single remote control” (id. at 1:6–9).
The remotely controlled AV devices include “videocassette recorder
(‘VCR’), stereo system, and digital versatile disc (‘DVD’) components, etc.”
Id. at 2:62–65.
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Figure 5 of Herz is reproduced below.

Figure 5 shows an exemplary remote control of Herz. Id. at 2:34–35.
As depicted in Figure 5, remote control 500 comprises display
screen 510 for interfacing with a user, stylus 516 for writing on display
screen 510, and buttons 512a–d & 514a–d for issuing commands and/or
entering data into remote control 500. Id. at 4:49–54. In an embodiment,
display screen 510 is connected to a handwriting recognition mechanism that
allows the user to issue commands and/or enter data to remote control 500
by writing onto display screen 510. Id. at 4:59–64. The display screen may
include touch screen display with pressure sensing ability for sensing user
inputs on the screen. Id. at 5:7–13.
In another embodiment, Herz describes a soft graphical user interface
(“Soft GUI”) that displays emulated buttons on the display screen of the
remote control to emulate the control interface of electronic components or
devices connected to the remote control. Id. at 9:49–10:2. According to
Herz, when an emulated button displayed on the screen is pressed by the
user, the remote control translates the user command to the corresponding
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control function and “sends the corresponding control signals to the
specified audio/video device(s).” Id. at 10:2–7. For example, Figure 9b of
Herz (not reproduced herein) shows the remote control displaying “VCR
control buttons (e.g. Play, Forward, Backward, Record, and Pause, etc.) on
the remote control display screen.” Id. at 10:13–17. The user can then
control the displayed VCR functions by pressing the corresponding control
buttons. Id. at 10:17–20. For instance, the user may choose the “Play”
function by pressing the corresponding button on the display screen with a
stylus, which causes the remote control to send the corresponding control
signal for activating the Play function of the VCR. Id. at 10:20–25.
In yet another embodiment, the remote control of Herz provides
expanded control functions for a television set. Id. at 10:60–13:21. In a
specific example of this embodiment, Herz describes the remote control
controlling various aspects of a PIP (picture-in-picture) window displayed
on a television set. Id. at 10:65–12:30. Herz describes that “instead of
transmitting specific predefined commands . . . from the remote control to
the television set,” the remote control can directly control the size and
location of a PIP window displayed on a television by sending
corresponding control signals. Id. at 10:65–11:6, 11:35–12:3.
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Figure 10c of Herz is reproduced below.

Figure 10c shows remote control 1010 coupled to television set 1020 (id. at
11:11–15) to allow users control the size of the PIP window displayed on the
television set from the remote control (id. at 11:44–54).
In this example, the user is able to adjust the size of the PIP window
displayed on the television set by resizing the PIP window on the simulated
television screen displayed on the remote control. Id. at 11:44–49. As
shown in Figure 10c, when the user adjusts the size of the PIP window on
the simulated television screen on remote control 1010, the corresponding
PIP window on the television set 1020 is resized accordingly. Id. at 11:49–
52. In an alternative embodiment, the user can resize the PIP window “on
the on-screen display on the television set 1020” by using the remote
control. Id. at 11:49–54.
In another example, which is illustrated in Figure 10d (not reproduced
herein), the user is able to move the location of the PIP window on the
television screen by dragging the emulated PIP window on remote control
1010, or in an alternative embodiment, by dragging the PIP window “on the
on-screen display on the television set 1020.” Id. at 11:55–60. According to
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Herz, in response to the command to reposition the PIP window, the remote
control issues the corresponding repositioning control signals to the
television set by transmitting the new location and/or size of the PIP window
as entered by the user. Id. at 11:64–12:1.
2. Overview of Zetts (Ex. 1007)
Zetts is directed to a method and apparatus for “efficiently
distinguishing between different types of input signals simulated by a
pointing device coupled to a multi-tasking computer system.” Ex. 1007,
code (57). Specifically, Zetts describes “a touch input device (e.g., a touch
workpad) for a data processing system.” Id. at 2:28.
Figure 1 of Zetts is reproduced below.

Figure 1 shows the front view of a “touch workpad” of Zetts used for the
detection of finger touch and stylus position. Id. at 3:40–42.
As described in Figure 1, Zetts’s touch workpad comprises liquid
crystal display (LCD) 18 and stylus 20 connected to the touch workpad via
cable 22. Id. at 3:55–58, 4:7. Zetts further describes that, in the touch input
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device (i.e., the touch workpad), “input signals generated from a pointing
device, such as a stylus or finger, can be categorized either as a mouse input
signal or as a gesture or handwriting input signal.” Id. at 2:29–31. Zetts
describes that “[w]here such input signals are intended to emulate the
behavior of a mouse and represent commands, such as mouse button down
and mouse button up, the stylus or finger is respectively touched down and
lifted off the surface” (id. at 2:31–33) but “[w]here the input signal is part of
a gesture, a series of such input signals resembling a geometric figure, such
as a circle, a right-hand or a left-hand arrow, are indicative of an action to be
taken by the computer system” (id. at 2:35–37).
According to Zetts, “[o]ne method of differentiating between the types
of input signals is by timing.” Id. at 2:42. Zetts describes that
If the user, after initiating contact between a pointing device and
the touch sensor, moves the pointing device to a desired position
and stops motion for a predetermined time period without losing
contact between the device and the touch sensor (hereinafter
referred to as “lift-off”), the operating system will recognize an
input signal at the desired position as a mouse command. For
example, if the user stops moving the pointing device at a given
position for 200 milliseconds, a mouse command at the given
position is recognized.
Id. at 2:42–47 (emphasis added). Zetts further describes that
If, on the other hand, the user does not stop at any given position
for the specified time delay period and instead lifts off the touch
sensor, the input signals are selected as candidates for character
or gesture recognition instead of mouse commands.
Id. at 2:47–50.
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E. Obviousness over Herz and Zetts
In this asserted ground of obviousness, Petitioner contends that claims
5–7, 9, 12, and 51 are unpatentable under § 103(a) over the combination of
Herz and Zetts. Pet. 20–62.
1. Proposed Combination of Herz and Zetts; Reason to Combine
Petitioner contends that Herz and Zetts are analogous prior art for the
’505 patent because both references are in the same field of endeavor as the
’505 patent—electronic devices (e.g., remote control) with a touch screen
display. Pet. 20, 22–23. In describing its proposed combination of Herz and
Zetts, Petitioner characterizes Zetts as disclosing the same type of touch
screen display device as Herz—i.e., both of Zetts’s and Herz’s touch screen
displays are implemented with a liquid crystal display (LCD) having a
pressure sensitive surface, support a GUI, and can be used with stylus or
finger. Id. at 25 (citing Ex. 1006, 3:66–4:31, 4:49–64, 5:7–13, 9:48–10:59,
Fig. 5; Ex. 1007, 2:15–40, 3:55–4:33, 4:55–5:12, Fig. 1). Petitioner further
contends that Zetts describes the same input types as Herz—i.e., icons or
buttons for commands, and motions or gestures made by the user on the
screen. Id. at 26 (citing Ex. 1007, 2:15–40, 3:15–33, 5:4–6:15, Figs. 5, 8A–
B, 9A–B, 10A–D, 11A–C, 12A–B).
In its proposed combination of Herz with Zetts, Petitioner relies on
Herz as teaching a universal remote control system or remote control (the
claimed “universal controlling device”), a pressure sensitive touch screen
display (the claimed “touch-sensitive surface”), consumer electronic devices
such as a television set (the claimed “one or more appliances located
remotely from the controlling device”), and their general functions and
operations. Pet. 28–31. According to Petitioner, Herz discloses “a universal
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remote control system having a touch screen display through which a user
can interact to provide input in several ways—such as, by pressing buttons
or by making motions or gestures on the screen.” Id. at 25 (citing Ex. 1006,
Title (code (54)), Abstr., Figs. 2, 3, 5, 8a–b, 9a–b, 10a–d, 11a–c, 12a–b).
Petitioner also relies on Herz for its teaching of “the difference
between the various input types and provides different display interfaces to
receive them.” Pet. 25 (citing Ex. 1006, 5:7–13, 10:8–25, 11:12–12:3,
Figs. 9a–b, 10a–d). For example, Petitioner asserts that the user “pressing”
or “pushing” a button on the GUI screen described in Herz teaches the
claimed “first input type indicative of a selection of a displayed graphical
user interface icon.” Id. at 35. Petitioner further contends that Herz teaches
or suggests “second input type indicative of continuous contact from a first
location to a second location on the touch sensitive surface” because Herz
describes “dragging” an emulated PIP (picture-in-picture) window on the
remote control to move the PIP window from one location to another
location on Herz’s touch screen display. Id. at 40–41 (citing Ex. 1006, 4:49–
5:30, 6:3–14, 11:57–59, 14:20–24, 17:66–18:4, Figs. 5, 10a–d, 12b).
Petitioner also argues that “Herz’s remote control, in order to function as
described, would need to ‘distinguish the first input type . . . from the second
input type’; otherwise, it would not respond correctly to the user’s different
inputs.” Id. at 47 (citing Ex. 1006, 5:7–13).
Although Petitioner argues that Herz’s disclosure of “dragging” an
emulated PIP window on the remote control teaches or suggests continuous
contact from a first location to a second location, Petitioner relies on Zetts
for its explicit teaching of continuous contact aspects of motion tracking on
the touch-sensitive surface. Pet. 41 (citing Ex. 1007, 6:2–7:14). Similarly,
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although Petitioner asserts that Herz’s disclosure of different types of input
on the touch-sensitive surface suggests “distinguish[ing] the first input type
. . . from the second input type” (id. at 47), Petitioner relies on Zetts’s
explicit teaching of distinguishing different types of input made on a touch
screen display, such as distinguishing between mouse commands from
gestures on the touch screen. Id. at 48 (citing Ex. 1007, 2:28–33, 2:41–42;
5:4–52, 6:2–13).
Supported by testimony of its declarant, Dr. Polish, Petitioner asserts
that a person of ordinary skill in art would have been motivated to combine
Herz and Zetts because Herz teaches that the input made on its display may
be processed by a “software program” and Zetts teaches how to implement
such software program, for example, as an improved “Advanced User
Interface (AUI),” so that it may “efficiently distinguish[] between different
types of input signals.” Pet. 27 (alteration by Petitioner) (citing Ex. 1006,
11:8–11, 9:11–19, 13:12–21; Ex. 1007, Abstr., 5:2–6, 5:24–27; Ex. 1004
¶ 102). Pointing to Zetts’s disclosures on methods and apparatus “for
efficiently distinguishing between different types of input signals” for a
touch screen device, Petitioner argues that a person of ordinary skill in art
implementing the remote control touch screen of Herz would have been
motivated to reduce the system overhead associated with distinguishing
between various input types, such as GUI button command and gesture
input, by employing the techniques of Zetts to reduce processor time spent
on input handling. Id. at 26–27 (citing Ex. 1007, Title, Abstr., 2:1–3, 2:51–
54, 3:3–14, 5:5–6, 7:31–42; Ex. 1004 ¶¶ 99–107).
Petitioner asserts that a person of ordinary skill in art would have had
a reasonable expectation of success in incorporating Zetts’s teachings into
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Herz because Zetts teaches the techniques and mechanics of how the touch
screen display of Herz’s remote control would operate. Pet. 43 (citing
Ex. 1004, 117). Citing the testimony of Dr. Polish, Petitioner further argues
that because the modification of a software program was a common and
straightforward task to a person of ordinary skill in art at the time of the
invention, a person of ordinary skill in art would have had a reasonable
expectation of success in incorporating Zetts’s teachings into Herz for
yielding a remote control system that is caused to distinguish between
different input types made onto a display. Id. at 50 (citing Ex. 1004, 149).
Patent Owner asserts that a person of ordinary skill in art would not
have combined Herz and Zetts to arrive at the claimed invention because
(1) Zetts is not analogous art to the claimed invention of the ’505 patent (PO
Resp. 33–39), (2) combining Herz and Zetts would have been
disadvantageous and would have rendered the combined device inoperable
(id. at 42–47), and (3) a person of ordinary skill in art would not have had a
reasonable expectation of success in combining Herz with Zetts (id. at 47–
49). We address each of these arguments in turn.
a. Analogous Art
In an obviousness analysis, “[t]wo separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis added) (quoting In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
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Turning to the first test, to determine the applicable field of endeavor,
the factfinder must consider “explanations of the invention’s subject matter
in the patent application, including the embodiments, function, and structure
of the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374,
1380 (Fed. Cir. 2019) (quoting Bigio, 381 F.3d at 1325). As discussed
above, Petitioner asserts that Zetts is analogous prior art for the ’505 patent
because Zetts is in the same field of endeavor as the ’505 patent—electronic
devices (e.g., remote control) with a touch screen display. Pet. 20, 22–23
(citing Ex. 1004 ¶¶ 77, 88).
In its Patent Owner Response, Patent Owner asserts that the field of
endeavor of the ’505 patent is a remote control with a touch screen display
and that Zetts is not analogous art because Zetts’s field of endeavor is
“reducing system overhead on a personal computer.” PO Resp. 34–35.
Patent Owner further argues that “Zetts does not disclose a remote control of
any kind.” Id. at 35–36. In the Reply, Petitioner asserts that Patent Owner
defines the ’505 patent’s field of endeavor too narrowly. Pet. Reply 23.
Citing the statement in the ’505 patent that the patent “relates generally to
controlling devices,” Petitioner argues that the patent’s field of endeavor
must include controlling devices more generally. Id. at 23–24 (citing
Ex. 1001, 1:16–18). Citing the testimony of Dr. Polish, Petitioner asserts
that Zetts is analogous art because it is “squarely within the field of
‘controlling devices . . . with a touch screen display.’” Id. at 24 (emphasis
added) (citing Ex. 1004 ¶ 88).
We agree with Petitioner’s argument and disagree with Patent
Owner’s argument. Considering “explanations of the invention’s subject
matter in the patent application, including the embodiments, function, and
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structure of the claimed invention,” Airbus, 941 F.3d at 1380, we first note
that the title of the ’505 patent is “CONTROLLING DEVICE WITH
DUAL-MODE, TOUCH-SENSITIVE DISPLAY.” Ex. 1001, code (54). As
Petitioner argues, the BACKGROUND section of the ’505 patent also states
that it “relates generally to controlling devices and, more particularly, to a
controlling device having a dual-mode, touch-sensitive display.” Id. at
1:16–18 (emphases added). In addition, in the DETAILED DESCRIPTION
section, the ’505 patent describes an embodiment of “a controlling
device 100 having a dual-mode, touch-sensitive face panel.” Id. at 2:50–51.
In view of these broad statements in the ’505 patent, we agree with
Petitioner that the field of endeavor of the ’505 patent is a “controlling
device with a touch-sensitive display,” notwithstanding the patent’s
disclosure of narrower embodiments specific to universal remote control
devices. See In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) (determining
the field of endeavor based on an express disclosure in the Background of
the Invention section of the application’s specification).
Even if we were to add the “dual-mode” requirement described in the
’505 patent to further narrow the field of endeavor of the ’505 patent to be a
“controlling device having a dual-mode, touch-sensitive display,” we agree
with Petitioner that Zetts is from the same field of endeavor as the ’505
patent because Zetts describes a controlling device with a touch-sensitive
display having at least two different modes of input operation, e.g.,
distinguishing between mouse button commands from gestures on the touch
screen. See Pet. 23–24 (asserting, in the context of Petitioner’s argument
that Zetts is analogous art, that “Zetts recognizes that with a touch screen
display, different types of input signals can be used,” such as a “mouse
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input” type for input made through buttons or icons on the display and
“gestures” input type when a finger or stylus touches the touch-sensitive
display for a predetermined period of time) (citing Ex. 1007, Abstr., 2:15–
42, 5:9–17, 5:24–27; Ex. 1004 ¶¶ 32–36, 88–90).
Turning to the second test, Patent Owner contends that “Zetts is not
reasonably pertinent to the problem of the ’505 patent because Zetts and the
’505 patent have different purposes.” PO Resp. 38. According to Patent
Owner, the ’505 patent is concerned with “creating a universal remote
control or a universal controlling device with a dual-mode touch-sensitive
display,” whereas Zetts is concerned with “reducing system overhead
associated with a delay timer in an operating system of a personal computer
by improving the software installed on the personal computer.” Id. Patent
Owner asserts that Zetts is not reasonably pertinent to the problem of the
’505 patent because “Zetts . . . has nothing to do with universal remote
controls, remote controls, or software for remote controls.” Id. at 39; PO
Sur-reply 14. In its Reply, Petitioner argues that, even accepting arguendo
Patent Owner’s articulation of the problem of the ’505 patent, Zetts is
reasonably pertinent to the problem because Zetts describes implementation
details for touch-sensitive display devices that receive inputs corresponding
to mouse commands and gestures. Pet. Reply 24–25. According to
Petitioner, because Zetts deals with touch input devices that can accept
multiple modes of touch input, it logically would have commended itself to
the ’505 patent’s inventor dealing with the alleged problem of creating a
remote control with a “dual-mode touch-sensitive display.” Id. at 25; see
also Pet. 23–24 (arguing that “Zetts recognizes that with a touch screen
display, different types of input signals can be used,” such as a “mouse
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input” type for input made through buttons or icons on the display and
“gestures” input type when a finger or stylus touches the touch-sensitive
display for a predetermined period of time) (citing Ex. 1007, Abstr., 2:15–
42, 5:9–17, 5:24–27; Ex. 1004 ¶¶ 32–36, 88–90).
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” Klein, 647 F.3d at 1348
(quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). A reference need
not be reasonably pertinent to every problem facing a field to be analogous
prior art, but rather need only be “reasonably pertinent to one or more of the
particular problems to which the claimed inventions relate.” Donner Tech.,
LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1361 (Fed. Cir. 2020)
(emphasis added). We agree with Petitioner that Zetts is reasonably
pertinent to at least one particular problem with which the inventor is
involved, i.e., providing a controlling device with a dual-mode touch-
sensitive display. Although the ’505 patent also deals with creating a
universal remote control that may have some differences from the touchpad
controlling device of Zetts, we agree with Petitioner that Zetts logically
would have commended itself to the ’505 patent’s inventor dealing with the
particular problem of creating a controlling device with a dual-mode touch-
sensitive display. See Donner, 979 F.3d at 1361 (“a reference can be
analogous art with respect to a patent even if there are significant differences
between the two references”).
In the Patent Owner Sur-reply, Patent Owner asserts that Petitioner’s
Reply presents improper new arguments addressing the ’505 patent’s field of
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endeavor and explaining why Zetts is reasonably pertinent to the problem
faced by the inventor of the ’505 patent. PO Sur-reply 23–24. Patent Owner
argues that these new Reply arguments should be disregarded because they
were not included in the Petition. Paper 37, 1. Petitioner asserts that these
Reply arguments are proper because they are responsive to Patent Owner’s
arguments in the Patent Owner Response. Paper 36, 6–7.
As discussed above, Petitioner in the Petition argued that Zetts is
analogous prior art for the ’505 patent because Zetts is in the same field of
endeavor as the ’505 patent—electronic devices (e.g., remote control) with a
touch screen display. Pet. 20, 22–23 (citing Ex. 1004 ¶¶ 77, 88). In its
Reply, Petitioner asserts that Patent Owner in the Patent Owner Response
defines the ’505 patent’s field of endeavor too narrowly to be “universal
controlling devices with touch screen displays” and argues that the field of
endeavor instead should be defined as “controlling devices . . . with a touch
screen display.” Pet. Reply 23–24. Thus, Petitioner’s definition of the field
of endeavor of the ’505 patent remains essentially the same between the
Petition and the Reply, and Petitioner’s argument in the Reply regarding the
field of endeavor are properly responsive to Patent Owner’s arguments in the
Patent Owner Response.
Although Petitioner did not discuss the “reasonably pertinent” test in
the Petition, Petitioner was not required to do so because the Petition
addressed one of the two separate tests to show Herz and Zetts qualify as
analogous art. Thus, Petitioner’s arguments in the Reply regarding the
“reasonably pertinent” test are properly responsive to Patent Owner’s
arguments in the Patent Owner Response. See Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1078–80 (Fed. Cir. 2015) (explaining that the Board may
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rely on new evidence submitted with a reply because that evidence was
responsive to the arguments in patent owner’s response).
We have considered the rest of Patent Owner’s arguments in the
Patent Owner Response and Patent Owner’s Sur-reply on the analogous art
issue, but find them unpersuasive. For example, Patent Owner in its Sur-
reply contends that “Petitioner does not dispute that Zetts’s field of endeavor
. . . is reducing system overhead.” PO Sur-reply 12 (citing Pet. Reply 23–
24). Contrary to Patent Owner’s contention, as discussed above, Petitioner
argues that Zetts is analogous art because it is “squarely within the field of
‘controlling devices . . . with a touch screen display.’” Pet. Reply 24 (citing
Ex. 1004 ¶ 88).
Patent Owner also asserts that Petitioner’s Reply does not support
with any evidence the argument that Zetts “deals with touch input devices
that can accept multiple modes of touch input.” PO Sur-reply 13–14. We
disagree with Patent Owner’s argument because, as discussed above,
Petitioner discussed, with citations to supporting evidence, this aspect of
Zetts in the Petition in the context of its argument that Zetts is analogous art.
See Pet. 23–24 (arguing that “Zetts recognizes that with a touch screen
display, different types of input signals can be used,” such as a “mouse
input” type for input made through buttons or icons on the display and
“gestures” input type when a finger or stylus touches the touch-sensitive
display for a predetermined period of time) (citing Ex. 1007, Abstr., 2:15–
42, 5:9–17, 5:24–27; Ex. 1004 ¶¶ 32–36, 88–90).
For the foregoing reasons and based on the complete record, we
determine that Petitioner has demonstrated sufficiently that Zetts is
analogous art to the ’505 patent.
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b. Disadvantages and Inoperability
Next, Patent Owner contends, citing the testimony of its declarant,
Mr. Bear, that a person of ordinary skill in the art (POSITA) would not have
been motivated to combine Herz and Zetts because
(i) implementing Zetts’ software on Herz’s remote control
would not have improved a similar device in the same way;
(ii) a POSITA would have known that implementing Zetts’
software on Herz’s remote control would have undesirably
increased system overhead on Herz’s remote; and
(iii) a POSITA would have known that implementing Zetts’
software on Herz’s remote control would have rendered Herz’s
remote control inoperable.
PO Resp. 43–44 (citing Ex. 2007 ¶¶ 122–130) (emphasis omitted). Citing
the testimony of Dr. Polish, Petitioner disputes Patent Owner’s contentions.
Pet. Reply 15–19 (citing Ex. 1024 ¶¶ 42–47). In particular, Petitioner argues
that Patent Owner’s arguments improperly relies on bodily incorporation of
references. Id. at 16–18.
We agree with Petitioner’s argument and disagree with Patent
Owner’s argument because Patent Owner improperly relies upon the bodily
incorporation of one reference into another, i.e., implementing Zetts’s
software on Herz’s remote control hardware, rather than maintaining focus
on the teachings of the references. “[T]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812
F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425
(CCPA 1981)).
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In the Sur-reply, Patent Owner asserts that Petitioner’s Reply presents
improper new arguments addressing why a person of ordinary skill in the art
would have been motivated to combine Herz and Zetts. PO Sur-reply 23
(citing Pet. Reply 15–20). Petitioner addresses each of its arguments in the
Reply identified by Patent Owner and argues that each is properly
responsive to Patent Owner’s arguments raised in the Patent Owner
Response. Paper 36, 5–6. Upon considering the full record, we agree with
Petitioner.
We have considered the rest of the parties’ arguments and the
competing testimony of their respective declarants (see PO Resp. 42–47; PO
Sur-reply 15–17; Pet. Reply 15–19) and, based on the complete record,
determine that Patent Owner’s arguments do not undermine Petitioner’s
showing.
c. Reasonable Expectation of Success
Lastly, Patent Owner argues that Petitioner has not shown sufficiently
that a person of ordinary skill in the art would have had a reasonable
expectation of success in combining Herz with Zetts. PO Resp. 47. Patent
Owner asserts that, contrary to Petitioner’s contention, modifying personal
computer software of Zetts to run on a completely different type of hardware
of Herz’s remote control would not have been a “common and
straightforward task,” but instead would have been complex, expensive,
time-consuming, and would have had no guarantee of success. Id. at 47–48
(citing Ex. 2007 ¶¶ 131–133). In its Reply, Petitioner argues that Patent
Owner’s arguments are “incorrectly premised on bodily incorporation of
Zetts with Herz.” Pet. Reply 19.
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We agree with Petitioner’s argument and disagree with Patent
Owner’s argument because Patent Owner improperly relies upon the bodily
incorporation of one reference into another, rather than maintaining focus on
the teachings of the references. See MCM Portfolio, 812 F.3d at 1294. We
have considered the rest of the parties’ arguments and the competing
testimony of their respective declarant (see PO Resp. 47–49; Pet. Reply 19–
20) and, based on the complete record, determine that Patent Owner’s
arguments do not undermine Petitioner’s showing.
For the foregoing reasons and based on the complete record, we
determine that Petitioner articulates sufficient reason, supported by rational
underpinning, for the combination of teachings from Herz and Zetts that it
proposes.
2. Discussion of Independent Claim 5 —
Differences Between the Claimed Subject Matter and the Prior Art
Petitioner challenges independent claim 5 as unpatentable under
35 U.S.C. § 103(a) over Herz and Zetts. Pet. 28–50.
a. Preamble
The preamble of claim 5 recites “[a] non-transitory computer-readable
media embodied in a physical memory device having stored thereon
instructions for causing a universal controlling device comprised of a display
having a touch-sensitive surface and adapted to transmit data to one or more
appliances located remotely from the controlling device to perform steps
comprising:” Ex. 1001, 7:50–55. In addressing the recitations of claim 5,
Petitioner draws a correspondence between (1) the recited “universal
controlling device” and Herz’s universal remote control system or remote
control (Pet. 28–29 (citing Ex. 1006, Abstr., 1:6–22, 1:24–26, 2:54–65, 4:1–
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31, 4:49–64, 9:48–10:59, 15:7–24, Figs. 1–3, 5)); (2) the recited “touch-
sensitive surface” and Herz’s pressure sensitive touch screen display (id. at
29–30 (citing Ex. 1006, 4:1–13, 4:49–64, 5:7–13, 17:53–67, Figs. 2, 3, 5,
11a)); and (3) the recited “one or more appliances” and Herz’s AV devices
such as a television set and “videocassette recorder (‘VCR’), stereo system,
and digital versatile disc (‘DVD’) components, etc.” (id. at 30–31 (citing
Ex. 1006, 1:6–9, 1:14–16, 2:60–65, 4:17–21, 9:57–62, Figs. 1, 2, 10a–d,
11a)).
Petitioner further asserts that Herz’s universal remote control (the
claimed “universal controlling device”) is “adapted to transmit data to one or
more appliances located remotely from the controlling device,” as recited in
claim 5, because Herz describes that “the communication between the
remote control and the television is preferably performed bidirectionally so
that commands and data can be transferred freely between the remote control
and the television set.” Pet. 31 (emphasis omitted) (citing Ex. 1006, 5:37–
40). In addition, Petitioner contends that Herz teaches “non-transitory
computer-readable media embodied in a physical memory device having
stored thereon instructions,” as recited in claim 5, because Herz describes
hardware “memory 306 for storing the remote control system program and a
handwriting recognition program” that include instructions readable by a
processor 304. Id. at 32 (emphasis omitted) (citing Ex. 1006, 4:1–17, 11:25–
27, 12:51–13:2, Figs. 3, 4). Petitioner also argues that Herz’s program
instructions stored on the memory are “for causing” the remote control to
perform various controlling steps because Herz describes that “the remote
control can be programmed to perform different controlling functions.” Id.
(emphasis omitted) (citing Ex. 1006, 13:12–21).
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Patent Owner does not dispute Herz teaches the preamble of claim 5.
See PO Resp. 19–49. Based on the complete record and for the reasons
explained by Petitioner, we find that Petitioner has demonstrated sufficiently
that Herz teaches the preamble5 of claim 5.6
b. Limitations [5.1], [5.2], and [5.3]
Petitioner identifies as limitation [5.1] the limitation of claim 5
reciting “displaying in the display of the universal controlling device one or
more graphical user interfaces comprised of graphical user interface icons.”
Pet. 33. Petitioner asserts that Herz teaches limitation [5.1] because Herz’s
universal remote control displays a graphical user interface comprised of
graphical icons or buttons that emulate or correspond to controls or
commands for AV devices, such as, for example, “VCR control buttons (e.g.
Play, Forward, Backward, Record, and Pause, etc.) . . . as shown in FIG.9b.”
Id. at 33–35 (citing Ex. 1006, 1:62–64, 9:48–10:59, Figs. 9a, 9b, 11a).
Petitioner identifies as limitation [5.2] the limitation of claim 5
reciting “accepting via the touch-sensitive surface of the universal
controlling device a first input type indicative of a selection of a displayed
graphical user interface icon.” Pet. 35. First, Petitioner asserts that Herz
teaches “a first input type indicative of a selection of a displayed graphical
user interface icon” because

5 Because Petitioner has shown that the recitations in the preamble are
satisfied by Herz, we need not determine whether the preamble is limiting.
See Vivid Techs., 200 F.3d at 803.
6 We also find that Patent Owner has waived any argument directed to the
preamble of claim 5. See Paper 13 (Scheduling Order), 8 (“Patent Owner is
cautioned that any arguments for patentability not raised in the response may
be deemed waived.”).
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Herz describes that after the graphical command buttons (e.g.,
emulating VCR control buttons) are presented on the display of
its remote control, “the user is . . . allowed to pick any of the VCR
functions,” by the user “pressing” or “pushing” the
corresponding button on the GUI screen, thereby selecting the
same by activating or actuating the button. . . . For example, “the
user can use a stylus to choose the “Play” function by pointing
to the corresponding button on the display screen.”
Id. (citing Ex. 1006, 10:8–39, 17:66–18:1, Figs. 9a, 9b).
Next, Petitioner contends that Herz teaches “accepting” such user’s
actuation of a GUI command button “via the touch-sensitive surface of the
universal controlling device” because Herz’s touch screen display senses and
processes the command input in order to translate or convert it to the
corresponding function or control. Pet. 36 (quoting Ex. 1006, 10:2–7
(“[w]hen any of the emulated buttons is pressed by the user, the remote
control translates the user command to the corresponding control function”
(emphasis by Petitioner)), 10:22–25 (“the remote control converts the user
input command to the corresponding control signals for activating the Play
function of the VCR” (emphasis by Petitioner)).
Petitioner identifies as limitation [5.3] the limitation of claim 5
reciting “initiating a transmission by the universal controlling device to the
one or more appliances first data representative of the displayed graphical
user interface icon selected by the first input type.” Pet. 37. Petitioner
asserts that Herz teaches “first data representative of the displayed graphical
user interface icon selected by the first input type” because when the user
presses and selects a GUI command button, Herz’s remote control converts
the user input command to the corresponding control signals for the
emulated function of the target AV device, such as the Play function of a
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VCR. Id. (citing Ex. 1006, 5:33–6:9, 9:49–10:39, 17:51–18:15, Figs. 9a,
9b). Citing the testimony of Dr. Polish, Petitioner argues that a person of
ordinary skill would have understood that Herz’s remote control
accomplishes this conversion by generating data for the command
corresponding to the selected GUI button or icon and converting the data
into a signal transmitted to the AV device. Id. at 37–38 (citing Ex. 1006,
3:46–65, 5:21–22, 8:29–32, 9:15–16, 10:22–25, 17:55–57; Ex. 1004, 89–
97).
Next, Petitioner asserts that Herz teaches “initiating a transmission by
the universal controlling device to the one or more appliances” of the recited
“first data” because Herz’s remote control sends the generated control signal
to the appropriate AV device, e.g., the VCR. Pet. 38–39 (citing Ex. 1006,
5:33–6:11, 10:2–7, 10:22–25 (“the remote control converts the user input
command to the corresponding control signals for activating the Play
function of the VCR”), 13:49–52, 17:66–18:15, Figs. 1, 2, 3, 4, 9b).
Patent Owner does not dispute that the disclosures of Herz relied on in
the Petition, as outlined above, teach limitations [5.1], [5.2], and [5.3].7 See
PO Resp. 19–49.

7 Although Patent Owner argues that “Petitioner is precluded from relying
on Herz’s OSD Embodiment to show that Herz discloses, teaches, or
suggests any of the limitations of Challenged Claim 5” because “Petitioner
and its expert did not rely on Herz’s OSD Embodiment in the Petition” (PO
Resp. 19), Patent Owner does not dispute that the disclosures of Herz relied
upon in the Petition, as outlined above, teach limitations [5.1], [5.2], and
[5.3] (see id. at 19–49).
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Based on the complete record and for the reasons explained by
Petitioner, we find that Petitioner has demonstrated sufficiently that Herz
teaches limitations [5.1], [5.2], and [5.3].8
c. Limitation [5.4]
Petitioner identifies as limitation [5.4] the limitation of claim 5
reciting “accepting via the touch-sensitive surface of the universal
controlling device a second input type indicative of a motion made across
the touch-sensitive surface.” Pet. 40. As discussed above in Section III.C
(Claim Construction), we construe “second input type indicative of a motion
made across the touch-sensitive surface” as “second input type indicative of
continuous contact from a first location to a second location on the touch
sensitive surface.”
Petitioner asserts that under this construction, the combination of Herz
and Zetts renders limitation [5.4] obvious. Pet. 40. First, Petitioner
contends that Herz teaches or suggests “second input type indicative of
continuous contact from a first location to a second location on the touch
sensitive surface” because Herz describes “dragging” an emulated PIP
window on the remote control to move the PIP window from one location to
another location on Herz’s touch screen display. Id. at 40–41 (citing
Ex. 1006, 4:49–5:30, 6:3–14, 11:57–59 (“the user is able to move the
location of [a picture in picture (PIP)] window screen on the television
screen by simply dragging the emulated PIP window on the remote
control” (emphasis by Petitioner)), 14:20–24, 17:66–18:4, Figs. 5, 10a–d,

8 We also find that Patent Owner has waived any argument directed to these
limitations of claim 5. See Paper 13, 8.
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12b). Supported by testimony of Dr. Polish, Petitioner argues that Herz’s
use of the term “dragging” teaches or suggests continuous contact from a
first location to a second. Id. at 41 (citing Ex. 1004, 112).
In addition, Petitioner asserts that Zetts explicitly discloses the
continuous contact aspect of the recited “second input type indicative of a
motion made across the touch-sensitive surface” because Zetts describes
recognizing a gesture input on Zetts’s touch pad when the user makes a
“touch-down” at a first touch input point on the touch screen and continues
to move through other points on the screen in a certain time frame without
lifting off the screen. Pet. 41–42 (citing Ex. 1007, 6:2–7:14). Specifically,
Petitioner relies on the following disclosure in Zetts.
A delay timer is reset every nth point to determine the period of
stability or cessation of pointing device movement initiated by
the user pausing on the touch sensor at 126. . . . In this example,
the user does not pause before pointing device (e.g., the stylus
20) is lifted, and therefore, the stroke is sent to a character
recognition unit or gesture recognition unit for processing . . . .
Id. at 42 (emphasis by Petitioner) (citing Ex. 1007, 6:5–12, Figs. 6–8).
Petitioner argues that by combining Herz’s teaching of “remote
control (e.g., implemented with software) that senses and recognizes
motions or gestures (e.g., dragging) on its touch screen display” with Zetts’s
teaching of “the motions or gestures [that] correspond to continuous contact
from a touch-down point to another point on the screen,” the combination of
Herz and Zetts teaches or renders obvious “accepting via the touch-sensitive
surface of the universal controlling device a second input type indicative of a
motion made across the touch-sensitive surface,” as recited in claim 5. Pet.
43–44.
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Patent Owner does not dispute Petitioner’s contentions in the Petition
regarding the teachings of Herz and Zetts with respect to limitation [5.4], as
outlined above.9 See PO Resp. 19–49. As discussed above in Section
III.E.1, we determine that Zetts is analogous art and that Petitioner has
demonstrated sufficiently that a person of ordinary skill in the art would
have been motivated to combine Herz and Zetts in the way claimed by
claim 5 and had a reasonable expectation of success in doing so.
Accordingly, based on the complete record and for the reasons
explained by Petitioner, we find that Petitioner has demonstrated sufficiently
that the combination of Herz and Zetts teaches or renders obvious “accepting
via the touch-sensitive surface of the universal controlling device a second
input type indicative of a motion made across the touch-sensitive surface,”
as recited in claim 5.
d. Limitation [5.5]
Petitioner identifies as limitation [5.5] the limitation of claim 5
reciting “initiating a transmission by the universal controlling device to the
one or more appliances second data representative of the motion made
across the touch-sensitive surface provided by the second input type.” Pet.
44. Patent Owner identifies this limitations as the “Second Data
Limitation.” PO Resp. 23. As discussed above in Section III.C, we construe

9 Although Patent Owner argues that “Petitioner is precluded from relying
on Herz’s OSD Embodiment to show that Herz discloses, teaches, or
suggests any of the limitations of Challenged Claim 5” because “Petitioner
and its expert did not rely on Herz’s OSD Embodiment in the Petition” (PO
Resp. 19), Patent Owner does not dispute Petitioner’s contentions set forth in
the Petition regarding the teachings of Herz and Zetts with respect to
limitation [5.4], as outlined above (see id. at 19–49).
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“second data representative of the motion made across the touch-sensitive
surface” as “second data representative of the continuous contact from the
first location to the second location on the touch sensitive surface.”
Petitioner asserts that, under this construction, the combination of
Herz and Zetts teaches limitation [5.5]. Pet. 44–47. First, as discussed
above with respect to limitation [5.4], Petitioner sufficiently shows that by
combining Herz’s disclosure of gesture input type on a touch screen display
(e.g., dragging) and Zetts’s disclosure of “motions or gestures that
correspond to continuous contact from a touch-down point to another point
on the screen,” the combination of Herz and Zetts teaches or renders obvious
“second input type indicative of continuous contact from a first location to a
second location on the touch sensitive surface.” Id. at 40–44. Petitioner
contends that a person of ordinary skill in the art would have understood that
Herz’s touch screen display uses data in order to make the adjustments to
what is displayed on the remote control screen. Id. at 44 (citing Ex. 1004,
120–129). Thus, Petitioner argues that the combination of Herz and Zetts
teaches “second data representative of the motion made across the touch-
sensitive surface provided by the second input type” because the television
set reflects movement of the PIP (in both direction and distance) made by
the user’s gesture on touch screen display: “the PIP window on the
television screen is positioned by the user to a new location when the
emulated PIP window on the remote control 1010 is dragged to a different
location.” Id. at 44–45 (emphasis by Petitioner) (quoting Ex. 1006, 11:60–
63). According to Petitioner, for the PIP window on the television screen to
reflect the movement and be positioned to the new location based on
movement of the emulated PIP window on the remote control, the television
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must receive data to instruct it to move the PIP window (i.e., the recited
“second data representative of the motion”). Id. at 45.
Petitioner further contends that Herz teaches “initiating a transmission
by the universal controlling device to the one or more appliances” of the
recited “second data” because Herz describes, among other examples, that
when a PIP window is dragged on the remote control, “the remote control
issues the corresponding repositioning control signals to the television set
by transmitting the new location and/or size of the PIP window as entered
by the user.” Pet. 45 (emphasis by Petitioner) (quoting Ex. 1006, 11:64–
12:1). Citing the testimony of Dr. Polish, Petitioner argues that a person of
ordinary skill in the art would have understood that “these repositioning
control signals convey or carry, in correspondence with the user’s dragging
motion, motion data (‘second data’) to the television set (‘one or more
appliances’) as control parameters to make adjustments to what is shown on
the television set.” Id. at 45–46 (underlined emphases added) (citing
Ex. 1004, 129–135) (quoting Ex. 1006, 12:11–30 (“the television set should
be able to accept the controlling parameters such as the location and the
size of the PIP window” (emphasis by Petitioner)), 20:11–25 (“transmitting
said second set of controlling parameters from the remote control to the
television; and adjusting the picture-in-picture window screen on the
television screen according to the second set of controlling parameters”
(emphasis by Petitioner)).
In sum, Petitioner’s position presented in the Petition is that the
combination of Herz and Zetts teaches transmitting “second data
representative of the motion made across the touch-sensitive surface”
because when a PIP window on the remote control is selected by a touch-
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down on the window and then dragged by continuous contact from the
touch-down point to another point on the touch screen, data representative of
the continuous contact from the first location to the second location on the
touch screen (the claimed “second data”) is transmitted to the television set
(the claimed “one or more appliances”) in the form of the “repositioning
control signals” issued by the remote control with the “controlling
parameters such as the location and the size of the PIP window” for the
television set.
Patent Owner contends that Herz does not disclose the remote control
transmitting to the television set data representing a “continuous contact
from a first location to a second location” because Herz does not transmit a
new location and/or size of the PIP window as the user drags the emulated
PIP window on the touch screen of the remote control. PO Resp. 24–25.
According to Patent Owner,
[b]ecause Herz’s remote control transmits the new location
and/or adjusted size of the PIP window to the television: (i) after
the user’s dragging gesture is completed; and (ii) even after the
remote control analyzes the adjustment and translates the
adjustment to controlling parameters comprising an adjusted size
of the PIP window, the data indicating the new location and/or
size of the PIP window (i.e., the alleged “second data”) is not
“representative of the continuous contact from the first location
to the second location on the touch sensitive surface.”
Id. at 26. Patent Owner further argues that Herz’s data indicating the new
location and/or size of the PIP window is “independent of (and thus does not
indicate) the path that a user’s finger or stylus takes on the touch screen
during a dragging gesture” and “at best represents only the static location
where the user lifts their finger off the touch screen at the end of the
dragging gesture.” Id.
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In its Reply, Petitioner argues that Herz describes, in response to a
user’s dragging motion on Herz’s touch-screen display (i.e., a motion made
across the touch-sensitive surface), transmission of “repositioning control
signals” indicating a new location and/or size of a PIP window. Pet. Reply 6
(citing Pet. 44–47). Petitioner further asserts that these “repositioning
control signals” teach the recited “second data,” because they are
“representative of the continuous contact from the first location to the
second location on the touch sensitive surface.” Id. at 6–7. According to
Petitioner, “[t]he transmitted repositioning control signals represent that the
user has selected (using a stylus contact) the PIP window, dragged the stylus
across the screen (i.e., continuously contacted the screen with motion), and
lifted the stylus, thereby causing the transmission of the repositioning
control signals.” Id. at 7 (citing Ex. 1024 ¶¶ 26–27). In other words, the
transmitted data represent that the user has selected the PIP window using a
stylus contact, the stylus continuously contacted the screen from the first
location (the user’s selection of the PIP window) to the second location (the
user’s intended terminal position of the PIP window) to effectuate the
movement. Id.
During oral hearing, the panel and Petitioner’s counsel had the
following exchange regarding this argument by Petitioner:
JUDGE CHUNG: So my question is: How does the
repositioning control signal sent to the TV or the appliance teach
this continuous contact or dragging?
MR. BAJAJ: So the repositioning control signal is
representative of the motion. It’s representative of the motion
because the user has intended to reposition the PIP window, and
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the user expresses that intent by dragging the PIP window on the
remote control. So the user expresses that intent by making a
continuous contact by selecting the PIP window on the remote
control and moving it to another location.
So in response to that, the remote sends commands,
repositioning control signals, to the television to effectuate that
movement, to move the PIP window from, you know, as in
Figure 10C of Herz, from the top right corner to the bottom left.
Tr. 21:10–25.
As discussed above in Section III.C (Claim Construction), Petitioner
argues that, under our construction of the Second Data Limitation, there is
no data streaming requirement, no temporal requirement of transmission
during the second input, and no requirement that second data indicate the
path of the continuous contact from the first location to the second location
at any particular level of granularity. Pet. Reply 2–3, 7–8.
In response, Patent Owner asserts that it seeks no such limiting
construction but, rather, is “simply trying to make the point that data that
indicates nothing more than the location where a user terminates their
dragging gesture on a touch screen display cannot represent continuous
contact from a first location to a second location on a touch-sensitive
surface.” PO Sur-reply 1.
Upon considering the full record, we agree with Petitioner’s argument
and disagree with Patent Owner’s argument. In particular, we agree with
Petitioner that Herz’s transmission of a repositioning control signal satisfies
the Second Data Limitation as transmitting data “representative of the
continuous contact from the first location to the second location on the
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touch-sensitive surface” for the reasons explained by Petitioner. As
discussed above, Patent Owner argues that Herz’s transmitted repositioning
control signal is “independent of (and thus does not indicate) the path that a
user’s finger or stylus takes on the touch screen during a dragging gesture.”
PO Resp. 26 (emphasis added). But the claim recites transmitting second
data “representative” of the motion made across the touch-sensitive surface,
which we construe to mean transmitting second data “representative” of the
“continuous contact” from the first location to the second location on the
touch sensitive surface. That is, both the claim language and our
construction recite “representative,” not “indicate” or “indicative.”
We note that limitation [5.4] of claim 5 recites “accepting via the
touch-sensitive surface . . . a second input type indicative of a motion made
across the touch-sensitive surface,” whereas limitation [5.5], i.e., the Second
Data Limitation, recites “initiating a transmission . . . second data
representative of the motion made across the touch-sensitive surface.”
Ex. 1001, 8:11–13, 8:14–16 (emphases added). This shows that the patentee
knew to use the word “indicative” to specify what the recited “second input
type” of limitation [5.4] requires. If the patentee had intended to similarly
specify the requirement of the “second data” recited in limitation [5.5], it
could have done so using the language of limitation [5.4], but did not. See
Intellectual Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1379
(Fed. Cir. 2018) (citing Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353,
1359 (Fed. Cir. 2016)). Thus, Patent Owner’s reading of limitation [5.5] to
require the “second data” to “indicate . . . the path that a user’s finger or
stylus takes on the touch screen during a dragging gesture” would have the
effect of erasing the material differences between the claim language of
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limitation [5.4] and limitation [5.5]. Limitation [5.5] requires the recited
“second data” to simply “represent” the “continuous contact” from a first
location to a second location on the touch sensitive surface, and nothing
further.
Accordingly, we agree with Petitioner that Herz’s transmission of a
repositioning control signal satisfies the Second Data Limitation as
transmitting data “representative of the continuous contact from the first
location to the second location on the touch-sensitive surface” for the
reasons explained by Petitioner.
Next, Patent Owner asserts that Petitioner’s argument in the Reply
that Herz’s repositioning control signals meet the Second Data Limitation
should be disregarded because Petitioner has “completely changed its theory
as to how Herz teaches the Second Data Limitation” in the Reply. See
Paper 37, 1, 5; PO Sur-reply 21–22. Patent Owner argues, inter alia, “the
Petition failed to address whether Herz’s ‘motion data’ represents:
(i) continuous contact; (ii) from the first location; and (iii) to the second
location” (Paper 37, 3 (citing Pet. 44–47)) and Petitioner in its Reply
“improperly changed its invalidity theory and attempted to ‘gapfill’ how
Herz teaches the Second Data Limitation” by presenting a new argument for
the first time in the Reply (id. (citing Pet. Reply 7)). Petitioner disagrees and
argues that what is presented in the Reply is the line of argument that
explains “how a POSITA would have interpreted Herz’s repositioning
control signals to teach the second data term, citing Dr. Polish’s reply
declaration, and this explanation directly follows from the Petition’s
argument that Herz transmits ‘data . . . in response to the user’s movement or
gesture (e.g., dragging a PIP window) . . . .’” Paper 36, 3–4 (citing Pet. 47)).
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We agree with Petitioner’s argument and disagree with Patent Owner’s
argument.
As discussed above, contrary to Patent Owner’s argument, the Petition
discussed Herz’s teachings of “a gesture input type on a touch screen display
(e.g., dragging) that is representative of ‘continuous contact from a first
location to a second location on the touch sensitive surface’” (Pet. 44
(underlined emphasis added)), as well as Herz’s disclosure of the motion
data corresponding to the user’s gestures or movement (e.g., dragging), such
as “the corresponding repositioning control signals to the television set”
issued by the remoted control “by transmitting the new location and/or size
of the PIP window as entered by the user’” (id. at 45 (emphasis by
Petitioner) (quoting Ex. 1006, 11:64–12:1)). The Petition also argued that a
person of ordinary skill in the art would have understood that “these
repositioning control signals convey or carry, in correspondence with the
user’s dragging motion, motion data (‘second data’) to the television set
(‘one or more appliances’) as control parameters to make adjustments to
what is shown on the screen.” Id. at 45–46 (bolded and underlined
emphases added) (citing Ex. 1004, 129–135; Ex. 1006, 12:11–30, 20:11–25).
In substance, these arguments and evidence presented in the Petition
depict Herz as describing that when a PIP window on the remote control is
selected by a touch-down on the window and then dragged by continuous
contact from the touch-down point to another point on the touch screen, data
representative of the continuous contact from the first location to the second
location on the touch screen (the claimed “second data”) is transmitted to the
television set (the claimed “one or more appliances”) in the form of the
“repositioning control signals” issued by the remote control with the
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“controlling parameters such as the location and the size of the PIP window”
for the television set. Thus, the essence of Petitioner’s argument remains the
same in the Reply. Petitioner’s arguments in the Reply are proper
responsive arguments expanding on essentially the same argument presented
in the Petition in response to Patent Owner’s arguments raised in the Patent
Owner Response. See Belden, 805 F.3d at 1078–80.
Next, Patent Owner asserts that “Petitioner cannot identify where
Herz purportedly teaches, describes, meets, or discloses that its repositioning
control signals may include data indicating selection of a PIP window and a
drag or continuous contact across the screen” because “Petitioner and its
expert tellingly fail to include any citations to Herz anywhere in the Reply
or the declaration in support thereof.” PO Sur-reply 4. We disagree with
Patent Owner’s argument because, as discussed above, Petitioner described
in the Petition, with citations to Herz and the Polish Declaration, the
disclosures of Herz Petitioner relies on, including the disclosure that “the
remote control issues the corresponding repositioning control signals to
the television set by transmitting the new location and/or size of the PIP
window as entered by the user” (Pet. 45 (emphasis by Petitioner) (quoting
Ex. 1006, 11:64–12:1; citing Ex. 1004, 129–135)); “the television set should
be able to accept the controlling parameters such as the location and the
size of the PIP window” (id. (emphasis by Petitioner) (quoting Ex. 1006,
12:11–30)); and “transmitting said second set of controlling parameters
from the remote control to the television; and adjusting the picture-in-
picture window screen on the television screen according to the second set
of controlling parameters” (id. at 45–46 (emphasis by Petitioner) (quoting
Ex. 1006, 20:11–25)). In addition, the Polish Declaration provided
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extensive discussion, with citations, of the disclosures of Herz Dr. Polish
further discusses in his Reply Declaration. See Ex. 1004, 129–135. Thus,
Petitioner’s Reply and the Polish Reply Declaration are adequately
supported by evidence of record. Compare Pet. 44–47, with Pet. Reply 6–8;
compare also Ex. 1004, 129–135, with Ex. 1024 ¶¶ 26–27.
Lastly, Patent Owner contends that Petitioner improperly presents for
the first time in the Reply an analysis of Herz under the correct construction
of the term “second data being representative of the moving touch made
across the touch-sensitive surface” because the Petition argued that the term
should be given its plain and ordinary meaning. PO Sur-reply 22; Paper 37,
2. We disagree with Patent Owner’s argument.
As discussed above, the Decision construed the term “second data
representative of the motion made across the touch-sensitive surface” to
mean “second data representative of the continuous contact from the first
location to the second location on the touch-sensitive surface.” Inst. Dec.
21–24 (emphasis added). Although the Petition did not advance this
construction, the Petition discussed extensively how Herz and Zetts teach
“dragging” that involves “continuous contact from a first location to a
second location on the touch sensitive surface.” See Pet. 44–47 (emphasis
added). We also agree with Petitioner that Petitioner’s Reply properly
presented analysis under our claim construction “as expressly endorsed” by
the Trial Practice Guide. Paper 36, 2 (citing Patent Trial and Appeal Board
Consolidated Trial Practice Guide,10 49).

10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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For the foregoing reasons and based on the complete record, we
determine that Petitioner has demonstrated sufficiently that the combination
of Herz and Zetts teaches the Second Data Limitation of claim 5.11
e. Limitation [5.6]
Petitioner identifies as limitation [5.6] the limitation of claim 5
reciting “allowing the universal controlling device to distinguish the first
input type received via the touch-sensitive surface from the second input
type received via the touch-sensitive surface.” Pet. 47. Patent Owner
identifies this limitation as the “Distinguishing Limitation.” PO Resp. 28.
Petitioner contends that the combination of Herz and Zetts teaches or renders
this limitation obvious. Pet. 47.
As discussed above with respect to limitations [5.2] and [5.4],
Petitioner demonstrates sufficiently that Herz teaches “accepting via the
touch-sensitive surface of the universal controlling device a first input type

11 In the Institution Decision, we encouraged the parties to address during
trial Herz’s alternative embodiments where the size and location of the PIP
window displayed on the television set are directly controlled from the
remote control by dragging the PIP window “on the on-screen display on the
television set 1020.” Inst. Dec. 38–39 (citing Ex. 1006, 11:49–60). Patent
Owner argues that Petitioner has not shown sufficiently that these
disclosures of Herz (which Patent Owner calls the “OSD Embodiment” (see
PO Resp. 10)) teach the Second Data Limitation. PO Sur-reply 9. We agree
with Patent Owner’s argument. Neither the Petitioner Reply nor the Polish
Reply Declaration cite or provide any independent analysis of Herz’s
disclosures mentioned in the Institution Decision, other than citing the
Institution Decision itself. See Pet. Reply 10–12 (citing Inst. Dec. 39);
Ex. 1024 ¶ 39. Based on the full record, we determine that Petitioner has not
carried its burden to show that Herz’s disclosures relating to the OSD
embodiment teach the Second Data Limitation or any other limitations of
claim 5. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
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indicative of a selection of a displayed graphical user interface icon” and
that the combination of Herz and Zetts teaches or renders obvious “accepting
via the touch-sensitive surface of the universal controlling device a second
input type indicative of a motion made across the touch-sensitive surface.”
Citing the testimony of Dr. Polish, Petitioner asserts that “it would have
been obvious to a [person of ordinary skill in the art] that Herz’s remote
control, in order to function as described, would need to ‘distinguish the first
input type . . . from the second input type’; otherwise, it would not respond
correctly to the user’s different inputs.” Pet. 47 (emphasis by Petitioner)
(citing Ex. 1006, 5:7–13; Ex. 1004, 138–139).
Petitioner also asserts that the combination of Herz and Zetts
explicitly teaches limitation [5.6]. Pet. 48. According to Petitioner, Zetts,
like Herz, discloses the different types of input made on a touch screen
display because Zetts describes that “input signals generated from a pointing
device, such as a stylus or finger, can be categorized either as a mouse input
signal [corresponding to button commands] or as a gesture or handwriting
input signal.” Id. (emphases and alteration by Petitioner) (quoting Ex. 1007,
2:28–33). Petitioner also points to Zetts’s explicit disclosures of
distinguishing different types of inputs, including the following passages:
“In order to utilize [the different] types of input signals, they must be
distinguished by the data processing system” (id. (emphasis and alteration
by Petitioner) (quoting Ex. 1007, 2:41–42)); “a method and apparatus for
efficiently distinguishing between different types of input signals simulated
by a pointing device” (id. (emphasis by Petitioner) (quoting Ex. 1007,
Abstr.)). Petitioner also asserts that Zetts provides an improved AUI for a
touch screen display, which is able to “more efficiently . . . distinguish
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between mouse [button] commands and gesture or character data.” Id.
(emphasis and alteration by Petitioner) (quoting Ex. 1007, 5:4–52, 6:2–13).
Addressing the combination of Herz and Zetts, Petitioner asserts that
Herz describes a universal remote control including a “software program”
that processes different input types made on the touch screen display, such
as button presses or dragging of windows. Pet. 48 (citing Ex. 1006, 11:8–
11, 9:11–19, 13:12–21). Petitioner argues that Zetts teaches how to
implement such a software program by describing an improved AUI for a
touch screen display, which is able to “more efficiently to distinguish
between mouse commands and gesture or character data.” Id. at 48–49
(emphasis omitted) (citing Ex. 1007, 5:2–52). Petitioner also quotes the
following disclosure in Zetts regarding AUI:
The present invention includes a computer module within the
stylus or finger-based operating system extension (AUI) to
differentiate between touch input signals intended to emulate a
mouse command, such as a mouse button down, mouse move,
or a mouse button up, and those touch input signals which are
to be considered a gesture or character.
Id. at 49 (emphasis by Petitioner) (quoting Ex. 1007, 5:24–27). Petitioner
argues that by combining these teachings of Herz and Zetts, e.g.,
implementing Zetts’s improved AUI software program on Herz’s remote
control device, the combination of Herz and Zetts teaches or renders obvious
“allowing the universal controlling device to distinguish the first input type
received via the touch-sensitive surface from the second input type received
via the touch-sensitive surface,” as recited in claim 5. Id. (citing Ex. 1004,
139–149).
Patent Owner contends that the combination of Herz and Zetts does
not teach or suggest the Distinguishing Limitation because the proposed
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combination would distinguish “between only moving touch input types.”
PO Resp. 39. Patent Owner asserts that although Zetts’s AUI software is
able to “distinguish between mouse commands and gesture or character
data” (id. at 40 (citing Ex. 1007, 5:3–6, 5:24–27), Zetts describes that
“mouse commands” and “gesture or character data” are both “types of
motions made across Zetts’ touch screen.” (id. (citing Ex. 1007, 2:42–47,
3:17–30, 3:44–46, 3:53–54, 5:18–23, 5:31–37, 5:47–52, 7:20–30, claims 4
and 13, Figs. 3, 6–8)).
We disagree with Patent Owner’s argument because the claim does
not require the first input type to be a non-moving type. Instead, the claim
requires distinguishing the first input type indicative of a selection of a
displayed graphical user interface icon from the second input type
indicative of a motion made across the touch-sensitive surface. In his
Declaration, Dr. Polish testifies that Zetts describes a “mouse input” type,
which corresponds or refers to input made through buttons or icons on the
display. Ex. 1004 ¶ 89 (citing Ex. 1007, 2:15–18; 5:24–27; 5:9–12 (“The
action bar 104 contains a single selectable menu item, ‘options.’ If the user
touches down with the pointing device (e.g., stylus, finger, etc.) on the
‘options’ menu item, a pulldown menu will appear to allow him to select one
of many available options.” (emphasis added)); see also Pet. 48 (citing
Ex. 1007, 5:4–52). Dr. Polish further testifies that
In Zetts, the ultimate differentiator between “mouse emulation
mode” and “gesture recognition mode” is how long a user
maintains a finger or stylus in one location on the touch screen.
If the user holds the finger or stylus at a particular location (i.e.,
does not move from that location) for a predetermined period of
time, the system interprets that input as selection of an icon or
button.
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Ex. 1004 ¶ 92 (emphasis added). Dr. Polish further explains “while Zetts
may describe that ‘mouse commands’ can include those which have some
movement of a stylus, a POSITA would have understood that Zetts
explicitly recognizes a user’s stylus input as a mouse command when the
stylus does not move.” Ex. 1024 ¶ 52. Patent Owner does not address Dr.
Polish’s testimony or explain adequately why the mouse button down or
mouse button up command that selects one of the menu options, as described
in Zetts, does not teach or suggest “a selection of a displayed graphical user
interface icon,” as recited in claim 5.
Based on the complete record, we determine that Petitioner has shown
sufficiently that the combination of Herz and Zetts teaches or renders
obvious “allowing the universal controlling device to distinguish the first
input type received via the touch-sensitive surface from the second input
type received via the touch-sensitive surface,” as recited in claim 5.
f. Conclusion on Claim 5
In consideration of the foregoing and based on the complete record,
we are persuaded by Petitioner’s arguments and evidence, notwithstanding
Patent Owner’s arguments, addressed above. Having weighed each of the
Graham factors, including the scope and content of the prior art and the
differences between the prior art and the challenged claim, we determine
that Petitioner has demonstrated by a preponderance of the evidence that
claim 5 is unpatentable under 35 U.S.C. § 103(a) over the combination of
Herz and Zetts.
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3. Dependent Claims 6, 7, 9, 12, and 51
Claims 6, 7, 9, 12, and 51 each depend directly or indirectly from
claim 5. Petitioner contends that Herz teaches each of the additionally
recited limitations of claims 9, 12, and 51. Pet. 57–62. In addition,
Petitioner asserts that the combination of Herz and Zetts renders obvious
each of the additionally recited limitations of claims 6 and 7. Id. at 51–57.
Claim 6 depends from claim 5 and further recites “wherein the
universal controlling device supports a first operational mode and a second
operational mode and the instructions allow the universal controlling device
to use the first operational mode and the second operational mode to
distinguish the first input type received via the touch-sensitive surface from
the second input type received via the touch-sensitive surface.” Ex. 1001,
8:22–29. As discussed above in Section III.E.2.a, Petitioner relies on Herz’s
universal remote control system or remote control to teach the claimed
“universal controlling device.” Pet. 28–29.
Petitioner further asserts that Zetts teaches a touch screen display
system that “supports a first operational mode and a second operational
mode,” as recited in claim 6, because Zetts describes that the AUI of its
touch screen display supports a “mouse emulation mode” and a “gesture
recognition mode.” Pet. 51 (citing Ex. 1007, 5:2–52, 6:2–39, 10:28–32; Ex.
1004, 153–161). According to Petitioner, the mouse emulation mode is
associated with or corresponds to operation of the touch screen display when
it receives icon or button commands. Id. at 51–52 (citing Ex. 1007, 2:15–18,
5:24–26, 7:13–24; Ex. 1004, 153–159). The gesture recognition mode, on
the other hand, is associated with or corresponds to operation of the touch
screen display when it receives a touch input signal corresponding to
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motions or gestures made by the user. Id. at 52 (citing Ex. 1007, 2:33–37,
2:49–50, 5:26–27, 6:8–15; Ex. 1004, 159–161). Citing the testimony of Dr.
Polish, Petitioner argues that a person of ordinary skill in the art would have
understood that the mouse emulation mode is the claimed “first operational
mode” and the gesture recognition mode is the claimed “second operational
mode.” Id. (citing Ex. 1004, 153–161). Petitioner argues, therefore, for
essentially the same reasons discussed above with respect to limitation [5.6],
the combination of Herz and Zetts teaches or renders obvious using “the first
operational mode and the second operational mode to distinguish the first
input type received via the touch-sensitive surface from the second input
type received via the touch-sensitive surface,” as recited in claim 6. Id. at
53–55.
Claim 7 depends from claim 6 and further recites “wherein the
instructions cause the universal controlling device to automatically toggle
between the first operational mode and the second operational mode.”
Ex. 1001, 8:30–33. Citing the testimony of Dr. Polish, Petitioner asserts that
a person of ordinary skill in the art would understand the term
“automatically toggle” means “switch over to an alternate state without
explicit user interaction.” Pet. 55 (citing Ex. 1004 ¶¶ 94–107). Petitioner
further argues that the combination of Herz and Zetts teaches or renders
obvious automatically toggling between the first operational mode and the
second operational mode because when “the user reaches the desired
position and stops moving for the set time delay,” Zetts’s AUI software
switches to the mouse emulation mode (“first operational mode”) and “a
mouse command is generated at the point at which the user has stopped,”
whereas in the case where “the user does not stop at a particular point for the
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specified time delay period and instead lifts off the touch screen,” the AUI
switches to the gesture recognition mode (“second operational mode”),
which “selects the set of input points generated by the pointing device (the
stroke) as candidate points for character or gesture recognition.” Id. at 56–
57 (citing Ex. 1007, 5:25–52, 6:32–39, Figs. 5A1–B; Ex. 1004, 179–184).
Claim 9 depends from claim 6 and further recites “wherein the first
data comprises command data for commanding one or more operational
functions of the one or more appliances.” Ex. 1001, 8:39–42. Petitioner
asserts that Herz teaches the additionally recited limitation of claim 9. Pet.
58–59. As discussed above with respect to the preamble and limitation [5.3]
of claim 5, Petitioner relies on Herz’s AV devices (e.g., television, VCR,
DVD) to teach “one or more appliances” and Herz’s data for the command
corresponding to the selected GUI button or icon to teach the claimed “first
data.” Id. at 58. Petitioner further asserts that Herz’s GUI display with
command buttons that a user can select to cause the remote control to send
corresponding command data to control the operation of an AV device
teaches that the “first data” “comprises command data for commanding one
or more operational functions of the one or more appliances,” as recited in
claim 9. Id. at 58–59 (citing Ex. 1006, 9:48–10:59, 10:8–25, Figs. 1, 9A–B;
Ex. 1004, 184–189).
Claim 12 depends from claim 6 and further recites “wherein at least
one of the first data and the second data are transmitted from the universal
controlling utilizing an RF protocol.” Ex. 1001, 8:51–54. Petitioner
contends that Herz teaches the additionally recited limitation of claim 12.
Pet. 60–61. First, Petitioner asserts that Herz describes that the GUI button
command data (the claimed “first data”) and data associated with a user’s
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gesture (the claimed “second data”) can be transmitted using “radio
frequency communication” (or “RF”) performed by respective “radio
frequency transceivers” on the remote control and AV devices. Id. at 60
(citing Ex. 1006, 1:48–50, 6:10–8:25, Figs. 1–4). Citing the testimony of
Dr. Polish, Petitioner argues that a person of ordinary skill in the art would
have understood that such RF communication is made “utilizing an RF
protocol.” Id. at 61 (citing Ex. 1004, 195–196; Ex. 1009, 6:48–51;12
Ex. 1010, 1:9–16, 2:24–2813).
Claim 51 depends from claim 5 and further recites “wherein the
instructions cause the universal controlling device to perform an operation in
response to a sound input.” Ex. 1003, 3:54–57. Petitioner asserts that Herz
teaches the additionally recited limitation of claim 51 because Herz
describes that its remote control includes “a voice recognition mechanism”
which “perform[s] an operation in response to a sound input” by “processing
voice commands issued by the user.” Pet. 61–62 (citing Ex. 1006, 3:28–46,
15:55–16:4, 17:16–19; Ex. 1004, 197–199).
Patent Owner does not respond specifically to Petitioner’s challenge
to claims 6, 7, 9, 12, and 51 beyond Patent Owner’s arguments advanced
with respect to claim 5 discussed above. See PO Resp. 49–50.
Based on the complete record and for the reasons explained by
Petitioner, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 6, 7, 9, 12, and 51 are
unpatentable under 35 U.S.C. § 103(a) over the combination of Herz and
Zetts.

12 U.S. Patent No. 6,791,467 B1, filed Mar. 23, 2000 (Ex. 1009).
13 U.S. Patent No. 8,402,505 B2, filed Feb. 4, 2000 (Ex. 1010).
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F. Obviousness over Herz and Zetts in Combination with Finkelstein
Claim 10 depends from claim 9 and further recites “the second data
comprises data for causing movement of a displayed cursor associated with
the one or more appliances.” Ex. 1001, 8:43–46. Petitioner asserts that the
combination of Herz and Finkelstein teaches the additionally recited
limitation of claim 10. Pet. 63–68.
Finkelstein describes a method for managing simultaneous display of
multiple windows in a graphical user interface (GUI). Ex. 1008, Abstr.
Finkelstein also describes using a cursor for various windows management
functions, such as clicking on objects, activating menus and/or control
objects in menus, double clicking on objects to activate them, and clicking
and holding an object to “drag” the object or selection to a different location,
etc. Id. at 7:29–34.
Petitioner asserts that the combination of Herz and Finkelstein teaches
using the remote control as a touch pad pointing device to control windows
functions on the television set with a cursor displayed on the television. Pet.
66–68 (citing Ex. 1006, 11:44–12:10; Ex. 1008, 2:47–49, 6:34–37, 7:18–35,
Figs. 1, 7b; Ex. 1004, 205–210). In the proposed combination, Petitioner
argues that any movement of the cursor appearing on Herz’s remote control
display screen (e.g., for dragging or repositioning a PIP window) would be
replicated in a cursor appearing on the television screen by the remote
control sending cursor movement control data to the television set. Id. at 67.
Thus, Petitioner asserts that the combination of Herz and Finkelstein teaches
“the second data comprises data for commanding movement of a displayed
cursor associated with the one or more appliances,” as recited in claim 10.
Id.
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Petitioner’s main theory is that it would have been obvious to a person
of ordinary skill in the art to add cursor functions to repositioning or resizing
of the PIP window discussed above with respect to limitation [5.5]14 by
combining Finkelstein’s teaching of using a cursor to perform windows
management functions (e.g., moving or resizing a window) with the
teachings of Herz and Zetts regarding the control of the size and location of
the PIP window on the remote control and the television set. See Pet. 66–67
(citing Ex. 1006, 11:44–12:10; Ex. 1008, 2:47–49, 6:34–37, 7:18–35, Figs.
1, 7B; Ex. 1004, 205–210 (providing a detailed mapping of the limitations of
claim 10 to the disclosures of Herz, Zetts, and Finkelstein)). In the proposed
combination, Petitioner argues that any movement of the cursor appearing
on Herz’s remote control display screen (e.g., for dragging or repositioning
an emulated PIP window) would be replicated in a cursor appearing on the
television screen by the remote control sending cursor movement control
data to the television set. Id. at 67; Pet. Reply 21 (citing Ex. 1004 ¶¶ 118–
120). In the cited paragraph of his Declaration, Dr. Polish testifies that a
person of ordinary skill in the art would have understood that “the data for
such cursor movement on Herz’s touch screen display would be provided or
transmitted to a television set for replication of the same.” Ex. 1004 ¶ 120
(citing Ex. 1006, 11:55–12:1). Thus, Petitioner asserts that the movement of
an item (e.g., dragging a PIP window) on Herz’s touch screen display—
which includes the use of a cursor, as taught by Finkelstein—and where such

14 Petitioner also discusses certain disclosures relating to Herz’s OSD
embodiment. See Pet. 68. We need not reach the question of whether
Petitioner’s analysis of the OSD disclosures is sufficient for claim 10
because we find that Petitioner makes a sufficient showing for claim 10
based on the non-OSD disclosures of Herz.
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movement is replicated on a television screen, renders obvious “wherein the
second data comprises data for causing movement of a displayed cursor
associated with the one or more appliances,” as recited in claim 10. Pet. 68.
According to Petitioner, the motivation to combine Herz and Zetts
with Finkelstein comes from the references themselves because Herz states
“the methods of resizing and repositioning Microsoft (TM) windows can be
similarly implemented in the remote control of the present invention” and
Finkelstein describes those methods for managing Microsoft windows to
provide “continuous, automatic adjustment to window size and position
based on analysis of a user’s interaction with a computer system.” Pet. 65
(citing Ex. 1008, 1:7–11; Ex. 1004 ¶ 121); see also Ex. 1006, 12:8–10.
In the Patent Owner Response and Sur-reply, Patent Owner does not
dispute Petitioner’s showing on the combined teachings of Herz, Zetts, and
Finkelstein beyond Patent Owner’s arguments advanced with respect to
claim 5 discussed above. See PO Resp. 50–59; PO Sur-reply 18–21. Patent
Owner also does not dispute Petitioner’s contention that the motivation to
combine Herz and Zetts with Finkelstein comes from the references
themselves. See PO Resp. 56–58; PO Sur-reply 20–21. Instead, Patent
Owner argues, citing the testimony of Mr. Bear, a person of ordinary skill in
the art would have had no reason to “employ a cursor on the GUI of Herz’s
remote control” because “the user’s finger or stylus would cover the cursor
when touching the touch screen, and thus the user would not be able to see
the cursor when using the touch screen.” PO Resp. 57–58 (citing Ex. 2007
¶ 149). But Mr. Bear does not explain why a person of ordinary skill could
not have employed ordinarily creative steps to avoid the problem he
identifies (e.g., by simply making the cursors larger or the stylus thinner).
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See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”), 418 (“a court can take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ”). Nor does he cite any supporting evidence for his
conclusory statements. See Ex. 2007 ¶ 149.
Next, Patent Owner argues that Finkelstein is not analogous art. PO
Resp. 50–56; PO Sur-reply 18–20. We agree with Patent Owner that
Finkelstein is not from the same field of endeavor as the ’505 patent. See
PO Resp. 50–53. As discussed above in Section III.E.1.a, Petitioner argues,
and we agree, that the field of endeavor of the ’505 patent is “controlling
device with a touch-sensitive display.” See Pet. Rely 24.15 In the context of
its analysis of claim 10, however, Petitioner contends that the ’505 patent’s
field of endeavor is “electronic computing devices with a GUI display.” Pet.
63. In its Reply, Petitioner contends that the field of endeavor is broadly
“controlling devices.” Pet. Reply 25. Petitioner contends that Finkelstein is
analogous art because it describes “user interface controls such as a mouse.”
Id. But Petitioner does not explain adequately why the field of endeavor of
the ’505 patent is different for claim 5 from claim 10, which depends from
claim 5. In any event, for the reasons discussed above in Section III.E.1.a,
we determine the field of endeavor of the ’505 patent is “controlling device
with a touch-sensitive display.” Thus, Finkelstein is not from the same field
of endeavor because Finkelstein does not describe any device with a touch-
sensitive display.

15 In the Petition, Petitioner argued that the field of endeavor of the ’505
patent is “electronic devices (e.g., remote control) with a touch-sensitive
display.” Pet. 20, 22–23.
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Nonetheless, we agree with Petitioner that Finkelstein is reasonably
pertinent to one or more of the problems of the ’505 patent. Petitioner
argues that the ’505 patent acknowledges a need for a universal controlling
device that is “adapted to provide remote, cursor control functionality” and
Finkelstein’s teachings of controlling a cursor or pointer, therefore,
“logically would have commended” itself to the inventor’s attention. Pet.
Reply 25 (citing Ex. 1001, 2:3–8). Patent Owner contends that Finkelstein is
not reasonably pertinent to the problem of the claimed invention of the ’505
patent because the ’505 patent is concerned with creating a universal remote
control device with a dual-mode touch-sensitive display, whereas Finkelstein
is concerned with managing the simultaneous display of multiple windows
on a personal computer’s monitor. PO Resp. 54.
As discussed above, a reference need only be “reasonably pertinent to
one or more of the particular problems to which the claimed inventions
relate” to qualify as analogous art. Donner Tech., 979 F.3d at 1361
(emphasis added). We agree with Petitioner that one of the particular
problems with which the ’505 patent’s inventor was involved is to provide
remote, cursor control functionality because the ’505 patent describes a
second operational mode of the controlling device, which is a pointer control
mode. See Ex. 1001, 5:15–16, 5:35–38. The ’505 patent further describes
that
all of the user interface functions typically associated with
mousing are included through use of the pointer control mode of
the universal controlling device 100 such as: double-tapping to
stick the pointer to a window bar, dragging the window across
the desktop, and single tapping to release; double-tapping to open
a window or start an application; etc.
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Ex. 1001, 6:3–9 (emphases added). Because, as discussed above,
Finkelstein describes using a cursor to perform various windows
management functions, such as clicking on objects, double clicking on
objects to activate them, and clicking and holding an object to “drag” the
object or selection to a different location, etc. (see Ex. 1008, 7:29–34),
Finkelstein logically would have commended itself to the ’505 patent’s
inventor dealing with the particular problem of creating a controlling device
with a pointer control mode that includes various windows management
functions. Thus, we agree with Petitioner that Finkelstein is analogous art.
In consideration of the foregoing and based on the complete record,
we are persuaded by Petitioner’s arguments and evidence, notwithstanding
Patent Owner’s arguments, addressed above. Accordingly, we determine
that Petitioner has demonstrated by a preponderance of the evidence that
claim 10 is unpatentable under 35 U.S.C. § 103(a) over the combination of
Herz, Zetts, and Finkelstein.
G. Obviousness over Herz and Zetts in Combination with Kushiro
Claim 49 depends from claim 5 and further recites “the instructions
cause the universal controlling device to initiate a playing of audio via a
speaker of the universal controlling device in response to an input received
into the universal controlling device.” Ex. 1003, 3:46–50. Petitioner asserts
that the combination of Herz and Kushiro teaches the additionally recited
limitation of claim 49. Pet. 70–71.
Kushiro describes a remote control device with a display that can
control the operation of various appliances, such as a television, air
conditioning, or lighting. Ex. 1016, Abstr., 9:28–31, Figs. 1, 13. In an
embodiment, Kushiro’s remote control device can read out sounds
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“lighting,” “air conditioning,” or “television” using a sounding device when
any one of the function items “lighting,” “air conditioning,” and “TV” on the
remote control is selected by the user. Id. at 23:7–10, Fig. 19.
Petitioner asserts that the combination of Herz and Kushiro teaches
the additionally recited limitation of claim 49 because Herz teaches a
universal remote control (Pet. 28–29, 70) and Kushiro teaches a remote
control that includes a “sounding device” that “sounds ‘lighting’, ‘air
conditioning’ or ‘television’ every time any one of the function items
‘lighting’, ‘air conditioning’ and ‘TV’ is selected” by the user, or “reads out
the function items ‘22 C’, ‘21 C’ and ‘20 C’ directly by voice as ‘twenty-two
degrees’, ‘twenty-one degrees’ or ‘twenty degrees’, to thereby announce the
function items” (id. at 70 (citing Ex. 1016, 22:60–23:21)). Supported by the
testimony of Dr. Polish, Petitioner argues that a person of ordinary skill in
the art would have understood from Kushiro’s teachings that when these
auditory messages (e.g., “lighting” or “twenty-two degrees”) are read out,
the sounding device is “playing” pre-recorded or computer-generated
“audio” sounds on a speaker pursuant to computer “instructions” executed
by a processor. Id. at 70–71 (citing Ex. 1016, 21:11–13, 22:66–23:6;
Ex. 1004, 214–216).
Petitioner asserts that the motivation to combine Herz with Kushiro is
found in Kushiro because Kushiro recognizes that, in some situations (e.g.,
darkened home theatre or visual impairment), it may be difficult for a user to
interact with a remote control visually. Pet. 69 (citing Ex. 1016, 1:16–29,
21:39–53, 22:60–23:21). Citing the testimony of Dr. Polish, Petitioner
argues that a person of ordinary skill in the art would have been motivated to
incorporate Kushiro’s teachings in Herz’s universal remote control to
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achieve Kushiro’s advantages of a remote control operable in the dark or by
handicapped persons. Id. at 69–70 (citing Ex. 1004 ¶ 130).
Patent Owner does not respond specifically to Petitioner’s challenge
to claim 49 beyond Patent Owner’s arguments advanced with respect to
claim 5 discussed above. See PO Resp. 59.
Based on the complete record and for the reasons explained by
Petitioner, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claim 49 is unpatentable under 35 U.S.C.
§ 103(a) over the combination of Herz, Zetts, and Kushiro.
IV. CONCLUSION16
For the foregoing reasons, we conclude that Petitioner has met its
burden of proof, by a preponderance of the evidence, in showing that
claims 5–7, 9, 10, 12, 49, and 51 of the ’505 patent are unpatentable. The
chart below summarizes our conclusions.

16 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claims
35
U.S.C. §
References/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
5–7, 9, 12, 51 103(a) Herz, Zetts 5–7, 9, 12, 51
10 103(a)
Herz, Zetts,
Finkelstein
10
49 103(a)
Herz, Zetts,
Kushiro
49
Overall
Outcome

5–7, 9, 10, 12,
49, 51

V. ORDER
In consideration of the foregoing, it is
ORDERED that claims 5–7, 9, 10, 12, 49, and 51 of the ’505 patent
are determined to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
a party to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Philip W Woo
David W. O’Brien
Raghav Bajaj
HAYNES AND BOONE, LLP
Philip.woo.ipr@haynesboone.com
david.obrien.ipr@haynesboone.com
raghav.bajaj.ipr@haynesboone.com

PATENT OWNER:
Benjamin S. Pleune
Ryan W. Koppelman
Thomas W. Davison
James H. Abe
Caleb J. Bean
Derek S. Neilson
Nicholas T. Tsui
ALSTON & BIRD LLP
ben.pleune@alston.com
ryan.koppelman@alston.com
tom.davison@alston.com
james.abe@alston.comcaleb.bean@alston.com
derek.neilson@alston.com
nick.tsui@alston.com

James J. Lukas
Benjamin P. Gilford
GREENBERG TRAURIG, LLP
lukasj@gtlaw.com
gilfordb@gtlaw.com