Universal Remote Control, Inc.v.UEI Cayman Inc.

Patent Trial and Appeal Board

Nov 24, 2014

09277887 (P.T.A.B. Nov. 24, 2014)

Trials@uspto.gov Paper 9
571-272-7822 Entered: November 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIVERSAL REMOTE CONTROL, INC.,
Petitioner,

v.

UEI CAYMAN, INC., and UNIVERSAL ELECTRONICS, INC.,1
Patent Owner.

____________

Case IPR2014-01111
Patent 6,407,779 B1
__________

Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

1 Patent Owner represents that the owner of the patent and real party-in-
interest is UEI Cayman Inc. and Universal Electronics, Inc. Paper 4. Patent
Owner should update Office assignment records to be consistent with its
representations made in Paper 4 of this proceeding.

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Patent 6,407,779 B1

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Petitioner Universal Remote Control, Inc. filed a Petition (Paper 1,
“Pet.”) requesting inter partes review of claims 7, 8, 11, and 12 of U.S.
Patent No. 6,407,779 B1 (Ex. 1001, the “’779 patent”). Patent Owner UEI
Cayman Inc. and Universal Electronics, Inc. filed a Preliminary Response
(Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a).
We conclude that Petitioner has failed to show a reasonable likelihood of
prevailing in challenging these claims and we decline to institute inter partes
review.
I. BACKGROUND
A. The ’779 patent (Ex. 1001)

The ’779 patent, titled Method and Apparatus for an Intuitive
Universal Remote Control System, relates to remote control systems for
televisions and other audio-visual systems. Ex. 1001, 1:6–10. The invention
features bi-directional communication between a remote control device and
a television set (or other audio-visual device). Id. at 5:34–53.
For example, the Specification teaches that the television set can
forward Electronic Programming Guide (EPG) data to the remote control.
Id. at 5:54–59. The Specification also teaches that the remote control can
store EPG data and other information received from the television set. Id. at
5:59–65; 13:39–52.
In contrast to unidirectional remote control devices, the bi-directional
remote control device of the ’779 patent can send and receive control level
information to and from the television set. Id. at 13:26–61. Such control
information includes volume control, brightness and sharpness of the TV
picture, and balance control of an audio system. Id. at 13:56–60.
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B. Illustrative Claim
Petitioner challenges claims 7, 8, 11, and 12. Claim 11, reproduced
below, is an independent claim:
11. A method for a remote control to communicate with an
audio/video device, said remote control comprising a user
interface, and said audio/video device comprising a plurality of
controlling components, wherein each of the controlling
components is set at a controlling level, comprising:
selecting one of the controlling components of the
audio/video device;
transmitting the corresponding controlling level of the
selected controlling component from the audio/video
device to the remote control;
storing the selected controlling level in a memory of the
remote control;
displaying the selected controlling level on the user
interface;
adjusting the selected controlling level using the user
interface; and
transmitting the adjusted controlling level to the
audio/video device to adjust the corresponding
component of the audio/video device.

C. The Asserted Grounds of Unpatentability
Petitioner challenges claims 7, 8, 11, and 12 of the ’779 patent as
unpatentable under 35 U.S.C. § 103 over U.S. Patent 5,956,025 to Goulden,
et al. (Ex. 1003) and U.S. Patent 5,537,106 to Mitsuhashi (Ex. 1004) as
further supported by the Declaration of James T. Geier (Ex. 1005).
Petitioner purportedly asserts two grounds of unpatentability over Goulden
and Mitsuhashi, one with Goulden as the primary reference and Mitsuhashi
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as the secondary reference and the other with the order of references
reversed. Where, as here, the relevant factual inquiries underlying an
obviousness determination are otherwise clear, characterization of references
as primary and secondary is merely a matter of presentation with no legal
significance. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012).
Consequently, we will consider the Petition as presenting a single ground of
unpatentability over Goulden and Mitsuhashi.2
D. Claim Interpretation
In an inter partes review, “claims are given their broadest reasonable
interpretation consistent with the specification.” See 37 C.F.R. § 42.100(b);
In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). Within
this framework, terms generally are given their ordinary and customary
meaning, as understood by a person of ordinary skill in the art, in the context
of the entire patent disclosure. Translogic Tech., 504 F.3d at 1257.3
1. “Controlling components” and “Controlling level.”
Petitioner’s proposed construction: controlling level refers
broadly to any control parameter which can take on ordered
values.
Pet. 10.
Patent Owner’s proposed construction:
“controlling components” means adjustable parameters.
“controlling level” means a level within a continuous range at
which the audio/video device is performing.
Prelim. Resp. 3.

2 In reaching our decision, we have considered all of the evidence and all of
the arguments presented by the Petitioner in both of the asserted grounds.
3 Citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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A claim construction analysis begins with, and is centered on, the
claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323, 1331 (Fed. Cir. 2001). In each of the challenged claims, a
“controlling component” is set at a “controlling level.” Ex. 1001, claims 7
and 11. In the preamble of claims 7 and 11, an audio/video device is
comprised of a plurality of controlling components. Id. Thus, the context of
the claim language indicates that a component is a constituent element of the
audio/video device.
In the Specification, “components” transmit “parameters” to the
remote control. Ex. 1001, 14:31. From the context, the component does the
transmitting and the parameter represents the informational content that is
transmitted by the component. Thus, the Specification draws a distinction
between a component and a parameter, rather than using the two terms
interchangeably as proposed by Patent Owner. We decline to adopt Patent
Owner’s proposed construction that controlling components means
adjustable parameters. We construe “controlling component” as a
constituent element of the claimed audio/video device that controls the level
of an output or performance parameter of the audio/video device.
With respect to the term “controlling level,” Patent Owner argues that
Petitioner’s proposed construction is too broad. Prelim. Resp. 4. Patent
Owner also argues that the phrase “ordered values” in Petitioner’s proposed
construction is ambiguous. Id. at 5. We agree that “ordered values”
confuses rather than clarifies the meaning of the claim language and we
decline to adopt Petitioner’s proposed construction.
On the other hand, Patent Owner’s proposed construction also is
unclear. The phrase “continuous range” in Patent Owner’s proposed
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construction is ambiguous. For example, if the volume control of a
television set can be set at only one of a plurality of discrete values
spaced 2 decibels apart, would such a system entail a “continuous range” in
accordance with Patent Owner’s construction? We understand, however,
that Patent Owner proposes a construction of controlling level that would
exclude, for example, binary-type controlling states.
The term “controlling level” is not defined in the Specification.
Outside of the claims, the word “level” is used in the Specification only in
the context of setting the volume level. A somewhat similar expression is
used in connection with adjusting the size of the PIP screen by resizing the
PIP window using standard window management techniques. Ex. 1001,
11:44–54. On the present record and for the purpose of the present
Decision, it is sufficient that we treat “controlling level” as relating to setting
the value of a performance parameter of a controlling component that is
adjustable within a range of values. Based on the record before us, and the
Specification of the ’779 patent describing adjusting volume levels and PIP
size, “controlling level” excludes binary, on-off switches and other, similar
audio/video system controls that can be set to only one of two possible
settings or values.
2. “Transmitting” to/from the remote control device.
Petitioner proposes constructions for the claim terms directed to
transmitting to and from the remote control device. Pet. 10–11. Patent
Owner argues that these phrases do not require construction. Prelim.
Resp. 8. To the extent there is disagreement between the parties on this
issue, resolution of this dispute is not material to our Decision. We agree
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with Patent Owner that express construction of these terms is not necessary
for purposes of this Decision.
II. ANALYSIS
A. Obviousness of Claims 7 and 8 over Goulden and Mitsuhashi
1. Goulden (Ex. 1003).
Goulden discloses a remote control device for a home entertainment
system that features a graphic user interface with touch screen functionality.
Ex. 1003, Abstract. Goulden’s invention is directed to an ergonomic design
of the graphic user interface that facilitates ease of use for the end user. Id.
at 2:12–18. Figure 3 of Goulden is shown below.

Figure 3 is a depiction of the graphical user interface screen of
Goulden. Approximately the upper one-third of the screen is devoted to
band 220 which contains basic information. Ex. 1003, 4:7–15. The lower
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one-third of the screen is devoted to band 222 with graphical representations
of basic controls. Id. The middle one-third of the screen is devoted to band
224 which contains a linear organization of graphical representations of
selectable items in layer 202. Id.
Figure 2 of Goulden and the accompanying specification disclosure
teaches that the graphical user interface is organized into a hierarchical
series of layers. Ex. 1003, Fig. 2, 3:25–4:65. Each of the layers comprises
icons for selectable sub-systems of the audio/video system associated with
the remote control. Id.
2. Mitsuhashi (Ex. 1004).
Mitsuhashi discloses a remote control device for an electronic device,
such as a Video Tape Recorder. Ex. 1004, 1:8–11. The remote control can
communicate bi-directionally with the Video Tape Recorder main unit. Id.
at 2:22–23. Communication from the remote control to the Video Tape
Recorder includes volume control. Id. at 11:42–58, Fig. 10G.
Communication from the Video Tape Recorder to the remote control, as
opposed to the opposite direction, is limited to signals representing an
operational state such as playback, stop, pause, record, and status
information such as record mode and input mode. Id. at 4:30–46.
3. Analysis of Claims 7 and 11.
Claims 7 and 11 are independent claims that are substantially similar
in scope except that claim 11 adds a “storing” limitation. Petitioner argues
that the combination of Goulden and Mitsuhashi discloses all of the
limitations of claims 7 and 11 and that a person of ordinary skill in the art
would have been motivated to combine the references to achieve the claimed
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invention. Pet. 19–27, 29–37, 39–47, and 49–58. Petitioner supports these
arguments with Declaration testimony from James Geier. Ex. 1005, ¶¶ 33–
60.
Patent Owner challenges the underlying factual basis beneath
Petitioner’s arguments on several points. First, Patent Owner argues that
Goulden fails to disclose the step of transmitting a controlling level from the
audio/video device to the remote control. Prelim. Resp. 19. Patent Owner
asserts that Goulden does not involve bi-directional communication. Id. We
agree.
Goulden is directed to an ergonomic graphical user interface for a
remote control device. Ex. 1003, 2:12–18. Although Goulden’s remote
control device communicates with a television set, we do not discern any
disclosure in Goulden that teaches bi-directional as opposed to unidirectional
communication. Petitioner’s arguments to the contrary are unpersuasive.
Petitioner relies on testimony from Mr. Geier to establish that
Goulden’s remote receives the volume level from the TV when the user has
selected adjustment of the volume control on the remote. Pet. 22, citing Ex.
1005, ¶ ¶ 34, 39, and 44. We have reviewed Mr. Geier’s testimony and do
not find that it is sufficiently credible to make a threshold showing for
institution of a trial. 35 U.S.C. § 314(a) (threshold standard is reasonable
likelihood of prevailing). Mr. Geier’s declaration concedes that “[s]imple
remotes for consumer electronics are typically unidirectional.” Ex. 1005,
¶ 22. The passage of Goulden that Mr. Geier relies on as disclosing bi-
directional communication merely indicates that information displayed on
the remote can be made available through an EPG. Ex. 1005, ¶ 34, citing
Ex. 1003, 4:66–5:13. However, there is no express disclosure in Goulden
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that the EPG data is transmitted to the remote control device from the
television set. Furthermore, Petitioner provides no persuasive evidence or
technical reasoning that would eliminate other possible sources, such as
downloading the EPG data from an Internet-capable computer using a wired
connection. Similarly, we do not find credible Mr. Geier’s testimony that
visual feedback of volume control discussed in Goulden is necessarily based
on transmission from the television set to the remote control. Ex. 1005,
¶ 34, citing Ex. 1003, 5:14–17. There is no explicit disclosure in Goulden
that the feedback info is transmitted from the television and Patent Owner
provides a reasonable, alternative explanation as to how the remote control
device could display feedback information without engaging in bi-
directional communication with the television set. Prelim. Resp. 16–17.
Patent Owner also disputes Petitioner’s evidence that Mitsuhashi
transmits a controlling level of a controlling component from the
audio/video device to the remote control. Prelim. Resp. 20–21. Patent
Owner concedes that Mitsuhashi engages in some bi-directional
communication between the remote control device and audio/video device.
Id. at 20. However, Patent Owner disputes that the data transmitted from the
audio/video device to the remote control is a “controlling level.” Id.
Petitioner relies primarily on a single passage from Mitsuhashi’s
Specification as disclosing this limitation. Pet. 42–43, citing Ex. 1004,
Abstract and 4:39–46. The column 4 passage from Mitsuhashi states:
When necessary, signals representing the operational state of
the VTR such as playback, stop, pause, record, and so forth;
status information, such as record mode, input mode, record
time, tape remaining amount, and so forth; and timer
information, such as timer reservation, reservation check,
current time, and so forth are transmitted from the light
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emitting/receiving portion 7 of the VTR main unit 1 to the
remote commander with the infrared ray signals.
Ex. 1004, 4:39–47. Petitioner augments the foregoing language with
testimony from Mr. Geier that merely states that Mitsuhashi “transmits
signals representing its setting state to the remote control.” Pet. 43, citing
Ex. 1005, at ¶ 54.
Based on the record before us and our construction of “controlling
level,” we are not persuaded that Mitsuhashi’s “setting state” corresponds to
the controlling level of a controlling component that is transmitted from the
audio/video device to the remote control as required by claims 7 and 11, as
“setting state” communication merely involves binary type controls and
indications. Ex. 1004, 2:22-31; 4:39-47. Thus, for the reasons discussed
above, Petitioner has not made a sufficient showing that either Goulden or
Mitsuhashi discloses transmission of a controlling level of a controlling
component from an audio/video device to a remote control as required by
claims 7 and 11.
Under the obviousness statute, a claim is not patentable if the
differences between the subject matter sought to be patented 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 of ordinary skill in the art. 35
U.S.C. § 103(a). Thus, the mere fact that neither Goulden nor Mitsuhashi
explicitly discloses transmission of a controlling level from an audio/video
device to a remote control does not end our inquiry because, “we do not
ignore the modifications that one skilled in the art would make to a device
borrowed from the prior art.” In re Icon Health & Fitness, Inc., 496 F.3d
1374, 1382 (Fed.Cir.2007). However, in this case, the Petition fails to make
any persuasive evidentiary presentation that a person of ordinary skill in the
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art, starting with Goulden, as a unidirectional remote control, and
Mitsuhashi, as a remote that discloses bi-directional communication of
setting states, would have had either the ability or the motivation to modify
the prior art to achieve the claimed invention.
Accordingly, we find that Petitioner has failed to establish a
reasonable likelihood that it would prevail at trial in establishing that
claims 7 and 11 are obvious over Goulden and Mitsuhashi.4
B. Obviousness of Claims 8 and 12 over Goulden and Mitsuhashi.
Claim 8 depends from claim 7 and claim 12 depends from claim 11.
In each instance, these claims contain a dependent limitation directed to a
user interface with a touch screen display. Ex. 1001. Petitioner’s challenges
to these two dependent claims suffer from the same infirmities that we have
identified above regarding their respective independent claims.
Accordingly, we find that Petitioner has failed to establish a
reasonable likelihood that it would prevail at trial in establishing that claims
8 and 12 are obvious over Goulden and Mitsuhashi.
III. CONCLUSION
We conclude that Petitioner has not shown a reasonable likelihood of
prevailing in challenging any claim of the ’779 patent.

4 We note that Petitioner makes cursory reference to the word “inherently”
in two places in the Petition. Pet. 11, 59. We are not persuaded that
Petitioner has made out a proper case for unpatentability under the doctrine
of inherency.
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IV. ORDER
After due consideration of the record before us, it is
ORDERED that the petition is denied and no trial is instituted.

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FOR PETITIONER:
Douglas Miro
dmiro@ostrolenk.com

Peter Kang
pkang@sidley.com

Theodore Chandler
tchandler@sidley.com

Ferenc Pazmandi
fpazmandi@sidley.com

Keith Barkaus
kbarkaus@ostrolenk.com

FOR PATENT OWNER:
Eric Maiers
maierse@gtlaw.com

Michael Nicodema
nicodema@gtlaw.com

James Lukas
lukasj@gtlaw.com

Robbie Harmer
harmer@gtlaw.com