IN THE UNITED STATES PATENT AND
Contents
1. DISPLAY CIRCUIT MICROPROCESSOR AEYBOARD RESET KEY TIMERS Bap oe Petition for Inter Partes Review of U S Patent No 7 831 930 In Evans the microprocessor is coupled to a RAM and an LCD display Id The RAM stores the program code and the LCD displays information for example in normal use the name of the key or function of the code to be outputted Id In a section titled Normal Use Evans teaches that t he first step in using the controller to control a particular device is to operate select keys 18A and or 18B to illuminate the annunciator corresponding to the selected device The controller is then held with the I R transmitter 138 pointed in the general direction of the device to be controlled and the key which has been programmed for the desired function on the desired device is operated This causes the name of the key or function to appear on display 14 and causes the I R code for the function to be outputted Id at 11 57 12 26 Thus Realistic alone or in view in Evans discloses to a person of ordinary skill the preamble of claim 1 See Ex 1008 at 17 23 36 allowing a plurality of lists of favorite channels to be defined for display in a display of the hand held device and Realistic discloses allowing the user to define a separate list for each of eight devices See Ex 1003 at pp 36 and 38 You can program a favorite channel list for each device name on the URC 242. Exhibit 1001 U S Patent No 7 831 930 filed Nov 6 2002 issued Nov 9 2010 to Dresti et al 3 Exhibit 1002 Prosecution history of U S Patent Application Serial No 10 288 727 which matured into the 930 Patent 4 Exhibit 1003 Realistic Universal Remote Control Owner s Manual Cat No 15 1903 5 Exhibit 1004 U S Patent No 4 825 200 filed Jun 25 1987 issued Apr 25 1989 to Evans et al 6 Exhibit 1005 ProntoEdit User Guide Version 2 0 7 Exhibit 1006 Pronto Universal Intelligent Remote Control User Guide 8 Exhibit 1007 RemoteCentral com web page http files remotecentral com view 3492 7441 l aaron_hugharts_pronto_setup html comments 9 Exhibit 1008 Declaration of Jim Geier In Support of the Petition for Inter Partes Review of U S Patent No 7 831 930 Geier Declaration 37 Petition for Inter Partes Review of U S Patent No 7 831 930 10 Exhibit 1009 Complaint for Patent Infringement in Universal Electronics Inc v Universal Remote Control Inc Civil Action No SACV 13 00984 filed June 28 2013 Current UEI Litigation 11 Exhibit 1010 Complaint for Patent Infringement in Universal Electronics Inc v Peel Technologies Inc Civil Action No SACV 13 01484 filed September 23 2013 Peel Litigation 12 Exhibit 1011 Joint Claim Construction Chart Pursuant to S P R 3 5 1 in Universal Electronics Inc v Peel Technologies Inc Civil Action N
3. C 102 b 2 U S Patent No 4 825 200 was filed Jun 25 1987 and issued on April 25 1989 to Evans et al Evans Evans is prior art to the 930 patent at least under 35 U S C 102 b 3 ProntoEdit User Guide Version 2 0 was published in September 2000 by Philips Electronics N V ProntoEdit ProntoEdit is prior art to the 930 patent at least under 35 U S C 102 b The Realistic Evans and ProntoEdit references were not considered during prosecution of the 930 patent Realistic Evans and ProntoEdit present new non cumulative technological teachings A detailed discussion of the references and their applicability to claim 1 of the 930 patent is provided starting at Section VII B below Pursuant to 37 C F R 42 104 b 2 inter partes review of the 930 Patent is requested on the following grounds Ground 1 Claim 1 is unpatentable as obvious over Realistic in view of Evans under 35 U S C 103 a Ground 2 Claim 1 is unpatentable as obvious over ProntoEdit in view of Realistic under 35 U S C 103 a Petition for Inter Partes Review of U S Patent No 7 831 930 3 How the challenged claims are to be construed The 930 patent has not expired Pursuant to 37 C F R 42 100 b the claims of an unexpired patent subject to inter partes review receive the broadest reasonable construction in light of the specification of the patent in which they appear Claim 1 of the 930 patent does no
4. Identification of Challenge ccssscccssssssscsssssssscessees 4 Claims for which inter partes review is requested 4 2 The specific art and statutory grounds on which the Challenge is based ssesecssoocossssoccessoscccessooesesssooeesssscseeessoo 4 3 How the challenged claims are to be construed 6 IV VI 4 How the construed claims are unpatentable under the statutory grounds identified in 37 C F R 42 104 b 2 6 5 Supporting evidence relied upon to support the od 1 C2 1 Se RO nr Oo RA rE 6 SUMMARY OF THE 930 PATENT ccccccscccscscsssssssccsccccecceees 7 A Summary of the Prosecution History of the 930 DRSGC IA eaissccscciciden desc sccatasceseatesscceestacteenisaxacedceuectentesececesescstestvecse 9 DETAILED CLAIM CONSTRUCT ION cccccsssccceccceeees 10 THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 930 PATENT IS UNPATENTABLE 12 A Claim 1 is obvious over Realistic in view of Evans 12 B Claim 1 is obvious over ProntoEdit in view of FROATISUIC us ssdekacsccdadencssigececsucsstenatesctsswcsesivesdiewcetvacsstcsasscccostexec 14 li Petition for Inter Partes Review of U S Patent No 7 831 930 VII DETAILED EXPLANATION OF HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE cccsscccsssssccssssccsssseccssssecceses 15 A Summary Of Prior Art sseesessseccecssosececssooccesssooecesssooeessoo 15 Realist
5. Review of U S Patent No 7 831 930 Geier Declaration Complaint for Patent Infringement in Universal Electronics Inc v Universal Remote Control Inc Civil Action No SACV 13 00984 filed June 28 2013 Current UEI Litigation _iv Petition for Inter Partes Review of U S Patent No 7 831 930 1010 1011 Complaint for Patent Infringement in Universal Electronics Inc v Peel Technologies Inc Civil Action No SACV 13 01484 filed September 23 2013 Peel Litigation Joint Claim Construction Chart Pursuant to S P R 3 5 1 in Universal Electronics Inc v Peel Technologies Inc Civil Action No SACV 13 01484 filed June 13 2104 UEI Peel Claim Construction Chart Petition for Inter Partes Review of U S Patent No 7 831 930 Petitioner Universal Remote Control Inc Petitioner or URC respectfully requests inter partes review of claim 1 of U S Patent No 7 831 930 the 930 Patent attached as Ex 1001 in accordance with 35 U S C 311 319 and 37 C F R 42 100 et seq I MANDATORY NOTICES Pursuant to 37 C F R 42 8 a 1 Petitioner provides the following mandatory disclosures A Real Party In Interest Pursuant to 37 C F R 42 8 b 1 Petitioner certifies that Universal Remote Control Inc is the real party in interest B Related Matters Pursuant to 37 C F R 42 8 b 2 Petitioner states that claim 1 of the 930 Patent is involved in the litigati
6. held device See Ex 1008 at 17 23 40 45 As ProntoEdit teaches a Pronto configuration fully defines a Pronto user interface including all devices macro groups panel layouts and button appearances and behaviors including all IR codes See Ex 1005 at 8 A person of ordinary skill would be motivated to define such favorite channels in light of Realistic which teaches defining a separate list for each of eight devices See Ex 1003 at pp 36 and 38 You can program a favorite channel list for each device name on the URC FAVORITE CHANNEL SELECTION 36 Your URC has a favorite channel feature that allows you to up to 32 favorite channels for each of the eight devices the URC gt ee two digit favorite mand TIME a Example If you press 04 Tide Tals 1 Press LEARN The LEARN CHN 04 appears on the w SN a indicator mT display appears SELECT i aip ah ai ayapa 7E v 4 Repeat Step 3 to continue z adding your favorite chan 2 Press FAVORITE The nels up to 32 channels FAV indicator appears and TME Note if the URC stops CHN appears on the pidi accepting favorite channels display Pipe ae a press STORE Thus ProntoEdit alone or in light of Realistic discloses allowing a plurality of lists of favorite channels to be defined for display as required by claim 1 See Ex 1008 at 40 42 45 accepting input into the hand held device that specifies to the hand held de
7. held with the I R transmitter 138 pointed in the general direction of the device to be controlled and the key which has been programmed for the desired function on the desired device is operated This causes the name of the key or function to appear on display 14 and causes the I R code for the function to be outputted See Ex 1004 at 11 57 12 26 IJ Petition for Inter Partes Review of U S Patent No 7 831 930 Since Realistic and Evans are directed to remote controls from the same company skilled artisans at the time understood that it was obvious to implement the Realistic remote to use instructions executable by a processing device for displaying information to the user as taught by Evans See Ex 1008 at 34 Thus Realistic and Evans disclose to a person of ordinary skill the whereby clause of claim 1 See Ex 1008 at J 34 39 1 Ground 2 Claim 1 is unpatentable as obvious over ProntoEdit in view of Realistic under 35 U S C 103 a The ProntoEdit reference in light of Realistic disclose all of the elements of claim 1 of the 930 patent as discussed below Ex 1008 at 40 48 Furthermore combining the references was obvious to skilled artisans at the time for the reasons discussed above at Section VI B and in more detail below Thus claim 1 of the 930 patent is unpatentable as obvious over the ProntoEdit reference in light of Realistic Ex 1008 J 40 48 Claim 1 An electronically readable media having embedded in
8. of panels Id In addition any button can jump to any panel Id at pp 8 and 19 ProntoEdit can create a CCF or Pronto configuration file which stores a single Pronto configuration CCFs have file extension ccf Id at 8 For example such a ProntoEdit configuration file can define panels of favorite channels for a Pronto remote control as demonstrated by Aaron Hughart in early 2001 See Ex 1007 and figure reproduced as follows 20 Petition for Inter Partes Review of U S Patent No 7 831 930 li do a fer B Detailed Grounds for Unpatentability Arguments 1 Ground 1 Claim 1 is unpatentable as obvious over Realistic in view of Evans under 35 U S C 103 a The Realistic reference in light of Evans disclose all of the elements of claim 1 of the 930 patent as discussed below Ex 1008 at 32 39 Furthermore combining the references was obvious to skilled artisans at the time for the reasons discussed above at Section VI A and in more detail below Thus claim 1 of the 930 patent is unpatentable as obvious over the Realistic reference in light of Evans Ex 1008 at J 28 39 Claim 1 An electronically readable media having embedded instructions executable by a processing device of a hand held device for displaying information to a user of the hand held device the instructions performing steps comprising Pe ee Petition for Inter Partes Review of U S Patent No 7 831 930
9. or key can jump to any panel or be a link to that panel See Ex 1005 at 19 Thus ProntoEdit discloses to skilled artisans that the same button that selects a device can jump to a panel of the corresponding favorite channels as taught by Realistic See Ex 1008 at 41 47 Indeed Realistic discloses that the same SELECT keys also select the favorite channel list that is defined for the selected device See Ex 1003 at 39 es ee Petition for Inter Partes Review of U S Patent No 7 831 930 3 ont SELECT 4 or gt to change devices Note If you select a device that you have not programmed a The ce aean _ favorite channel list for the FAV indicator goes out If you use ei mar vol addict _ SELECT 4 or gt to return to a device that you have program med with a favorite channel list the FAV indicator appears again 2 When you press CHANNEL a or v the URC trans mits the channels from your favorite channel list instead of the normal CHANNEL a v command codes Thus ProntoEdit in light of Realistic discloses to a person of ordinary skill the whereby clause of claim 1 See Ex 1008 at 17 23 42 43 48 VIII CONCLUSION The prior art references identified in this Petition contain pertinent technological teachings either explicitly or inherently disclosed or otherwise obvious to a person of ordinary skill that were not previously considered in the manner presented herein or applied during origi
10. that the claims require the mode selection input to select the Petition for Inter Partes Review of U S Patent No 7 831 930 favorite channel and that mode is different from the Allport reference in which the favorite channels are selected based on user identity Id at pp 483 484 After the Examiner rejected the claims again the applicants appealed and argued that in the claims the mode the target device selection selects the favorites list and the Examiner failed to find a motivation to modify Allport s user based selection Id at 514 In particular applicants argued in their Appeal Brief that the same input has to be used for mode and favorite list selection appliances e g a TV a VCR etc Accordingly since Allport fails to disclose teach or suggest a hand held device that accepts input that specifies to the hand held device that the hand held device is to be placed into a mode to control at least one of a plurality of home appliances it is respectfully submitted that Allport must also fail to disclose teach or suggest a hand held device that uses that particular form of input ie the input that specifies to the hand held device that the hand held device is to be placed into a mode to control at least one of a plurality of home appliances that is missing from Allport in the first instance to select at least one of a lurality of lists of favorite channels for display in a display of the hand held device as is expressly
11. to a single panel of Administrative Patent Judges for administrative efficiency C Lead and Back Up Counsel Pursuant to 37 C F R 42 8 b 3 Petitioner provides the following designation of counsel Petition for Inter Partes Review of U S Patent No 7 831 930 Lead Counsel Back Up Counsel Douglas A Miro Peter H Kang Reg No 40 350 Ostrolenk Faber LLP Theodore W Chandler Reg No 50 319 1180 Avenue of the Americas New Ferenc Pazmandi Reg No 66 216 York NY 10036 Sidley Austin LLP Telephone 212 596 0500 1001 Page Mill Rd Facsimile 212 382 0888 Building One dmiro ostrolenk com Palo Alto CA 94304 USPTO Customer No 02352 Telephone 650 565 7000 USPTO Reg No 31 643 Facsimile 65 565 7100 pkang sidley com USPTO Customer No 37803 D Service Information Pursuant to 37 C F R 42 8 b 4 service information for lead and back up counsel is provided above I PAYMENT OF FEES The undersigned authorizes the Office to charge to Deposit Account No 15 0700 9 000 for the request fee required by 37 C F R 42 15 a 1 and 14 000 for the Post Institution fee required by 37 C F R 42 15 a 2 for this Petition for Inter Parties Review Review of 1 claim is being requested so no excess claims fee is included in this fee calculation The undersigned further authorizes payment for any additional fees that might be due in connection with this Petition to be charged to the above referenced Deposi
12. 1 See Ex 1008 at 17 23 37 accepting input into the hand held device that specifies to the hand held device that the hand held device is to sic placed into a mode to control at least one of a plurality of home appliances and Realistic discloses that pressing the SELECT keys selects a device to be controlled See Ex 1003 at 8 LOS Petition for Inter Partes Review of U S Patent No 7 831 930 USING SOME KEYS SEVERAL TIMES The URC has 38 programmable keys You can teach each com mand key up to eight different remote control commands one command for each of the eight device indicators TV VCR1 VCR2 CABLE RCVR CD SAT and AUX up to the available memory space Before you teach or use a command press the SELECT key 4 or gt to select the desired device Thus Realistic discloses to a person of ordinary skill accepting input to place the remote control into a mode to control an appliance as required by claim 1 See Ex 1008 at 17 23 37 in response using the input to select at least one of the plurality of lists of favorite channels Realistic discloses that the same SELECT keys also select the favorite channel list that is defined for the selected device See Ex 1003 at 39 3 Use the SELECT 4 or gt devices Me Note If you select a device that you have not programmed a comoro channel lst favorte channel list for the FAV indicator goes out If you use vice that you select _ SELECT 4
13. 212 382 0700 Fax 212 362 0888 dmiro ostrolenk com Counsel for Petitioner 35 Petition for Inter Partes Review of U S Patent No 7 831 930 CERTIFICATE OF SERVICE IN THE UNITED STATES PATENT AND TRADEMARK OFFICE U S Patent No 7 831 930 Patent Issue Date November 9 2010 Patent Filing Date November 6 2002 Primary Examiner Ryan F Pitaro Title SYSTEM AND METHOD FOR DISPLAYING A USER INTERFACE FOR A REMOTE CONTROL APPLICATION Mail Stop Patent Board Patent Trial and Appeal Board United States Patent and Trademark Office P O Box 1450 Alexandria VA 22313 1450 CERTIFICATE OF SERVICE FILED WITH PETITION FOR INTER PARTES REVIEW OF U S PATENT NO 7 831 930 Dear Sir or Madam Petitioner in the above identified Inter Partes Review proceeding respectfully submits this CERTIFICATE OF SERVICE certifying as follows I hereby certify that all of the below listed documents are being served via United States Postal Service Express Mail via compact discs on the counsel of record for United States Patent No 7 831 930 hereinafter Patent on the date set forth below and in envelopes addressed to the mailing address of counsel and current correspondence address of record related to the Patent 36 Petition for Inter Partes Review of U S Patent No 7 831 930 GREENBERG TRAURIG LLP 77 West Wacker Drive Suite 3100 Chicago IL 60101 1 Petition for Inter Partes Review of U S Patent No 7 831 930 2
14. IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD In re Patent of Dresti et al Patent No 7 831 930 Filed Nov 6 2002 Issued Nov 9 2010 Assignee Universal Electronics Inc Title SYSTEM AND METHOD FOR DISPLAYING A USER INTERFACE FOR A REMOTE CONTROL APPLICATION Mail Stop PATENT BOARD Patent Trial and Appeal Board Petition for Inter Partes Review under 35 U S C 311 319 and 37 C F R 42 100 et seq United States Patent and Trademark Office P O Box 1450 Alexandria VA 22313 1450 PETITION FOR INTER PARTES REVIEW OF U S PATENT NO 7 831 930 Petition for Inter Partes Review of U S Patent No 7 831 930 TABLE OF CONTENTS HEEB GEES T aieea tat shvaavestasesantsrcientintiritesttaiiniastasbiniinnes iv I MANDATORY NOTICES seoesoeesoeesocesoessossocesocesocesoesesossoessoessosssoseo 1 A Real Party Iin Interest seocoesssoccessssccecssooccessscooeessssosseessso 1 B ROL AGE INIAULETS oe ise ceicess cadicisssccsesiavacdeccesnsnssnadesscesscoaverhssesansss 1 C Lead and Back Up Counsel ssooecssooesessssooecsssscoecsssseceeseo 2 D Service Information eessoocessocesooscssocesoossssosesoosessosesoosessose 3 U PAYMENT OF FEES sideisisecssiesscesscivsgusiacscsenssssdecticaniaceussctessiaseasenssouss 3 HI REQUIREMENTS FOR INTER PARTES REVIEW sccssee00 4 A Grounds For Standing ccccsccccsssssssscccssssssssccssssssssccesees 4 B
15. PATENTABLE Petitioner provides a number of prior art patents and publications demonstrating unpatentability of claim 1 the 930 patent The grounds of invalidity set forth below explain how numerous disclosures in the prior art teach expressly or inherently the limitations of claim 1 of the 930 patent A Claim 1 is obvious over Realistic in view of Evans Realistic is a user manual published by Tandy Corporation in 1989 for a universal remote control with an LCD display Ex 1003 at pp 1 3 and 5 With 12 Petition for Inter Partes Review of U S Patent No 7 831 930 the Realistic remote the user can control eight devices TV VCRI VCR2 CABLE RVCR CD SAT and AUX Id at p 8 The user can select the desired device by pressing the SELECT key and a corresponding device indicator appears on the display Id The Realistic remote has a favorite channel feature that allows the user to specify up to 32 favorite channels for each of the eight devices the URC can command Id at p 36 The specified favorite channel list can be reviewed on the display of the remote by using the SCROLL keys Id at pp 37 38 Realistic teaches that when the user presses the SELECT keys to change devices the favorite channel list becomes active for any device that you select Id at p 39 Thus Realistic teaches that the same input which selects the device also selects the corresponding favorite list as required by claim 1 of the 930
16. Realistic discloses a universal remote control with an LCD display Realistic at pp 1 3 and 5 A QUICK LOOK AT YOUR URC IR Sensor Window Pp LCD Display Display i CHANNEL Key VOLUME Key QTR Quick Timer Recording Key Realistic also discloses memory to remember up to 119 commands or command sequences Id at p 45 MEMORY CAPACITY The URC can remember up to 119 commands or command sequences A itte quick multiplication tells you that you ll run out of memory space if you try to use all 24 command keys for all eight device indicator settings And there is no room left for command sequences Skilled artisans at the time understood that the remote s memory also includes instructions executable by a processing device of a hand held device for displaying information See Ex 1008 at 17 23 36 Furthermore Evans discloses a reconfigurable remote control for multiple products that can be selected by dedicated keys See Ex 1004 at FIG 1 and 1 7 11 and 4 5 22 Figure 1 shows the remote control with the keys 79 Petition for Inter Partes Review of U S Patent No 7 831 930 Evans further teaches that the heart of the controller is a microprocessor and mJost of the functions are performed through the programming of microprocessor 100 Id at FIG 2 and 4 46 63 and 14 40 45 Figure 2 of Evans shows the processor connected to other blocks of the system Vaid 100
17. claimed Id at 519 After the appeal process the Board agreed with the applicants and the 930 patent issued on Nov 9 2010 V DETAILED CLAIM CONSTRUCTION A Construction of Terms 10 Petition for Inter Partes Review of U S Patent No 7 831 930 Claims in the presently requested inter partes review proceeding are to be construed in accordance with the broadest reasonable construction in light of the specification of the 930 patent in accordance with 37 C F R 42 100 b Unless otherwise indicated the terms of the 930 patent are used in their ordinary and customary sense as one skilled in the relevant field would understand them under the broadest reasonable interpretation standard Further Petitioner reserves all rights as it is entitled under applicable law to assert the same or different claim constructions for the 930 patent under the different standards and different applicable court procedures in the pending 2013 UEI Litigation B Construction of the Term accepting input into the hand held device that specifies to the hand held device that the hand held device is to placed into a mode to control at least one of a plurality of home appliances and in response using the input to select at least one of the plurality of lists of favorite channels The 930 claim term accepting input into the hand held device that specifies to the hand held device that the hand held device is to placed into a mode to c
18. creen and can include buttons with corresponding actions Id at p 8 The Device includes a list of panels Id In addition any button can jump to any panel Id at pp 8 and 19 Furthermore Realistic discloses defining a separate list of favorite channels for each device See Ex 1003 at p 36 Thus skilled artisans at the time understood that ProntoEdit can be used to define a button that selects a device and a corresponding panel of favorite channels as taught by Realistic See Ex 1008 at 40 48 Indeed such a panel showing favorite channels for a TV using ProntoEdit was developed and published by Aaron Hughart in early 2001 See Ex 1007 14 Petition for Inter Partes Review of U S Patent No 7 831 930 Accordingly as explained below in more detail there is a reasonable likelihood that ProntoEdit in view of Realistic renders obvious claim 1 of the 930 patent VII DETAILED EXPLANATION OF HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE Pursuant to 37 C F R 42 104 b 4 Petitioner provides in the following description a detailed comparison of the claimed subject matter and the prior art specifying how each element of the challenged claim is found in the prior art references Further information and details supporting the unpatentability of claim 1 of the 930 patent over the prior art can be found in the Geier Declaration Ex 1008 incorporated herein by reference A Summary of Prior Art 1 Realistic Universal R
19. ee Petition for Inter Partes Review of U S Patent No 7 831 930 FAVORITE CHANNEL SELECTION Your URC has a favorite channel feature that allows you to specify 7 P up to 32 favortte channels for each of the eight devices the URC S Enter your two digit favorite orz can command Example If you press 04 IIAN rai 1 Press LEARN The LEARN iek a E indicator appears SELECT 4 Repeat Step 3 to continue adding your favorite chan 2 Press FAVORITE The nels up to 32 channels _ FAV indicator appears and Note if the URC stops CHN appears on the accepting favorite channels display press STORE The defined lists can be displayed on the remote s LCD display for example for review Id at pp 37 38 3 Use the SCROLL a or v Notes keys to locate the desired ae shaming iki to delete the channel To e To review the favorite channel list use SCROLL a or w add a channe to the list You cannot add more than 32 channels to the favorite channel acter ha tan che Sor Sut list If you already have 32 channels stored on your favorite channel Press STORE channels list you must delete channels before adding new ones after you delete or add a to the list See Editing Favorite Channel Selection channel Thus Realistic discloses to a person of ordinary skill allowing a plurality of lists of favorite channels to be defined for display as required by claim
20. emote Control Owner s Manual Cat No 15 1903 Realistic Exhibit 1003 Realistic is a user manual published by Tandy Corporation in 1989 for a universal remote control with an LCD display Ex 1003 at pp 1 3 and 5 A QUICK LOOK AT YOUR URC Bie IR Sensor Window p L GO Dieniey IR Range Indicator Display LIGHT Button Batte ompartment On back SELECT en wen soume i CHANNEL Key VOLUME Key QTR Quick Timer Recording Key Petition for Inter Partes Review of U S Patent No 7 831 930 With the Realistic remote the user can control eight devices TV VCRI VCR2 CABLE RVCR CD SAT and AUX Id at p 8 The user can select the desired device by pressing a SELECT key and a corresponding device indicator appears on the display Id USING SOME KEYS SEVERAL TIMES The URC has 38 programmable keys You can teach mand key up to eight different remote control pins berii command for each of the eight device indicators TV VCR1 VCR2 CABLE RCVR CD SAT and AUX up to the available memory space Before you teach or use a command press the SELECT key 4 or gt to select the desired device The Realistic remote has a favorite channel feature that allows the user to specify up to 32 favorite channels for each of the eight devices the URC can command Id at p 36 FAVORITE CHANNEL SELECTION 36 Your URC has a favorite channe feature that allows you to specify i i up to 32
21. favorite channels for each of the eight devices the URC 3 Enter your two digit favorite can command channel Pres LEA erp t yeu eet Oe 1 CHN GH 4 RN The LEARN a a on the 7 indicator appears SELECT iat ae i E and KEY alternately appear fe display ci v 4 Repeat Step 3 to continue adding your chan 2 Press FAVORITE The FAV indicator appears and CHN appears on the usm accepting f display Be press STORE The specified favorite channel list can be reviewed on the display of the remote by using the SCROLL keys Id at pp 37 38 After the favorite channel lists are programmed pressing the FAVORITE key causes the remote to then transmit the channels from the favorite channel list when the CHANNEL keys are pressed Id at pp 38 39 16 Petition for Inter Partes Review of U S Patent No 7 831 930 2 When you press CHANNEL a or v the URC trans You can program a favorite channel list for each device name mits the channels from your on the URC After you program favorite channel fist into the favorite channel list instead your URC follow these steps to use the favorite channel feature a EANNA 1 Press FAVORITE The FAV Use the SELECT 4 or gt indicator appears to cha devices nge The favorite channel list becomes active for any de vice that you select Realistic teaches that when the user presses a SELECT key to change devices the fav
22. ic Universal Remote Control Owner s Manual Cat No 15 1903 Realistic Exhibit 1003 15 2 U S Patent No 4 825 200 Evans Exhibit 1004 17 3 ProntoEdit User Guide ProntoEdit Exhibit 1005 19 B Detailed Grounds for Unpatentability Arguments 21 Ground 1 Claim 1 is unpatentable as obvious over Realistic in view of Evans under 35 U S C 103 a 21 Ground 2 Claim 1 is unpatentable as obvious over ProntoEdit in view of Realistic under 35 U S C 103 a PE EE EE E E SEENE 28 VUL CONCLUSION sissscdissistsesesssetscatastasecscnacstuedsassatasoaveavisstates tavastanasscanses 33 iii Petition for Inter Partes Review of U S Patent No 7 831 930 EXHIBIT LIST 1001 1002 1003 1004 1005 1006 1007 1008 1009 U S Patent No 7 831 930 filed Nov 6 2002 issued Nov 9 2010 to Dresti et al Prosecution history of U S Patent Application Serial No 10 288 727 which matured into the 930 Patent Realistic Universal Remote Control Owner s Manual Cat No 15 1903 U S Patent No 4 825 200 filed Jun 25 1987 issued Apr 25 1989 to Evans et al ProntoEdit User Guide Version 2 0 Pronto Universal Intelligent Remote Control User Guide RemoteCentral com web page http files remotecentral com view 3492 7441 l aaron_hugharts_pronto_setup html comments Declaration of Jim Geier In Support of the Petition for Inter Partes
23. ite channels associated with that home appliance See Ex 1001 at 38 27 47 see also Ex 1008 at 24 Petition for Inter Partes Review of U S Patent No 7 831 930 A Summary of the Prosecution History of the 930 patent The application for the 930 patent was filed on November 6 2002 claiming priority to two provisional applications filed in November and December of 2001 The 930 patent names Universal Electronics Inc UEI as assignee and Dresti et al as inventors See Ex 1001 at p 1 Original claims 1 73 were subject to a restriction requirement Ex 1002 at p 382 The applicants selection included original claim 33 directed to user specific favorite lists and original claim 35 directed to appliance specific favorite lists Id at 389 The Examiner rejected the selected claims as unpatentable over the prior art including the Williams 988 patent which disclosed user specific favorite channels Id at 402 The applicants amended the claims to require displaying the favorite channels on the remote control and clarifying that the claimed mode is associated with a home appliance Id at 424 The Examiner rejected the amended claims over the Allport 019 reference alone or in combination with the Williams 988 reference Id at 461 In response the applicants amended the claims again to require embedded instructions and canceled claims directed to user specific favorite channels Id at 479 The applicants also argued
24. nal examination of the 930 patent These references provide new non cumulative technological teachings not previously considered and relied upon on the record and they establish a reasonable likelihood of success as to Petitioner s assertions that claim 1 of U S Patent No 7 831 930 is not valid in view of the prior art per the grounds presented in this Petition The undersigned further authorizes payment for any additional fees or credit one ee Petition for Inter Partes Review of U S Patent No 7 831 930 of overpayment that might be due in connection with this Petition to Deposit Account 15 0700 Respectfully submitted Date July 2 2014 Douglas A Miro Reg No 31 643 OSTROLENK FABER LLP 1180 Avenue of the Americas 7 Floor New York NY 10036 212 382 0700 Counsel for Petitioner 34 Petition for Inter Partes Review of U S Patent No 7 831 930 CERTIFICATE OF SERVICE The undersigned certifies service pursuant to 37 C F R 42 6 e 42 8 e and 42 105 b on the Patent Owner by Express Mail of a copy of this Petition for Inter Partes Review and supporting materials on compact discs at the mailing address of counsel and current correspondence addresses of record for the 930 patent GREENBERG TRAURIG LLP 77 West Wacker Drive Suite 3100 Chicago IL 60101 DATED July 2 2014 Respectfully submitted Douglas A Miro Reg No 31 643 OSTROLENK FABER LLP 1180 Avenue of the Americas New York NY 10036
25. o SACV 13 01484 filed June 13 2104 UEI Peel Claim Construction Chart 13 Power of Attorney per 37 C F R 41 10 b 14 This Certificate of Service DATED July 2 2014 Respectfully submitted Douglas A Miro Reg No 31 643 OSTROLENK FABER LLP 1180 Avenue of the Americas New York NY 10036 212 382 0700 Fax 212 362 0888 dmiro ostrolenk com 38
26. on presently styled Universal Electronics Inc v Universal Remote Control Inc Ohsung Electronics Co Ltd and Ohsung Electronics U S A Inc Case No SACV 13 00984 AG JPRx C D Cal filed on June 28 2013 2013 UEI Litigation Petitioner was the sole defendant in the 2013 UEI Litigation on July 2 2013 and consequently the only defendant served with a complaint in the 2013 UEI Litigation on July 2 2013 The 2013 UEI Litigation remains pending The patents in suit are U S Patent Nos 5 228 077 Petition for Inter Partes Review of U S Patent No 7 831 930 5 255 313 5 414 761 5 552 917 RE39 059 6 407 779 7 831 930 7 126 468 7 589 642 and 8 243 207 Claim 1 of the 930 Patent has also been asserted in another litigation styled Universal Electronics Inc v Peel Technologies Inc Case No SACV 13 01484 AG JPRx C D Cal filed September 23 2013 the Peel Litigation See Ex 1010 This litigation is currently pending Petitioner has not been served with a complaint of infringement in the Peel litigation and is not a defendant in the Peel litigation This Petition for inter partes review is directed to U S Patent No 7 831 930 Petitions for inter partes review corresponding to the remaining nine patents in the 2013 UEI Litigation will also soon be filed In light of this the Patent Trial and Appeal Board PTAB may wish to consolidate one or more of any other inter partes review actions related to this matter
27. ontrol at least one of a plurality of home appliances and in response using the input to select at least one of the plurality of lists of favorite channels refers to the hand held device receiving user input which puts it in a mode to control a specific home appliance and in response to the same user input the hand held device selects one of the favorite channel lists Ex 1008 at 25 27 This interpretation is also 11 Petition for Inter Partes Review of U S Patent No 7 831 930 consistent with the arguments made by the applicants during prosecution See IV above In the co pending Peel Litigation mentioned above Patent Owner has agreed to a construction of the phrase in response using the input to select at least one of the plurality of lists of favorite channels to mean the mode specifying input automatically selects at least one of the favorite channel lists Ex 1011 at p 2 Regardless of whether UEI s proposed agreed construction is deemed to be consistent with the broadest reasonable construction in accordance 37 C F R 42 100 b and without any admission by Petitioner that such constructions are or are not correct in this inter partes review proceeding Patent Owner should not be allowed to assert a claim construction for the 930 patent which is any narrower than its proposed constructions in the Peel Litigation VI THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 930 PATENT IS UN
28. or to return to a device that you have program med with a favorite channel list the FAV Indicator appears again Thus Realistic discloses to a person of ordinary skill to select at least one of the plurality of lists of favorite channels as required by claim 1 See Ex 1008 at J 17 23 37 38 whereby the user may interact with the at least one of the plurality of lists when displayed in the display of the hand held device to cause the hand held device to transmit one or more 26 Petition for Inter Partes Review of U S Patent No 7 831 930 command codes to the at least one of the plurality of home appliances associated with the specified mode for the purpose of tuning the at least one of the plurality of home appliances to a channel represented on the at least one of the plurality of lists of favorite channels Realistic discloses that pressing the CHANNEL keys transmits the channels from the favorite channel list See Ex 1003 at 39 2 When you press CHANNEL a or v the URC trans mits the channels from your favorite channel list instead of the normal CHANNEL a v command codes Evans further teaches that the LCD displays the name of the key or function of the code to be outputted The first step in using the controller to control a particular device is to operate select keys 18A and or 18B to illuminate the annunciator corresponding to the selected device The controller is then
29. orite channel list becomes active for any device that you select Id at p 39 If the selected device has no favorite channel list no favorites are displayed Id Note If you select a device that you have not programmed a favorite channel list for the FAV indicator goes out If you use SELECT 4 or p gt to return to a device that you have program med with a favorite channel list the FAV indicator appears again Thus Realistic teaches that the same input which selects the device also selects the corresponding favorite list as required by claim 1 of the 930 patent See Ex 1008 at 33 2 U S Patent No 4 825 200 Evans Exhibit 1004 Evans issued in 1989 and identifies Tandy Corporation as the Assignee on its face See Ex 1004 at p 1 identifying Tandy as the Assignee Evans discloses a reconfigurable remote control for multiple products that can be selected by dedicated keys Id 1 7 11 and 4 5 22 Evans s Figure 1 shows the keys on the disclosed remote control 17 Petition for Inter Partes Review of U S Patent No 7 831 930 Evans further teaches that the heart of the controller is a microprocessor and mJost of the functions are performed through the programming of microprocessor 100 Id at 4 46 63 and 14 40 45 Figure 2 of Evans shows the microprocessor and other functional blocks as follows DISPLAY CIRCUIT MICROPROCESSOR AEYBOARD RESET KEY 18 Pe
30. patent See Ex 1008 at 32 39 In addition to the Realistic publication the Tandy Corporation also disclosed detailed structure for remote controllers in patents such as the Evans patent See Ex 1004 at p 1 identifying Tandy as Assignee Evans discloses a reconfigurable remote control for multiple products that can be selected by dedicated keys Id at 1 7 11 and 4 5 22 Evans further teaches that the heart of the controller is a microprocessor that is coupled to a RAM and an LCD display Id at 4 46 63 Since Realistic and Evans are directed to remote controls from the same company skilled artisans at the time understood that it was obvious to 213 Petition for Inter Partes Review of U S Patent No 7 831 930 implement the Realistic remote to use instructions executable by a processing device for displaying information to a user as taught by Evans See Ex 1008 at 34 39 Accordingly as explained below in more detail there is a reasonable likelihood that Realistic in light of Evans renders obvious claim 1 of the 930 patent B Claim 1 is obvious over ProntoEdit in view of Realistic ProntoEdit is a user guide published in 2000 by Philips for configuring a Pronto remote controller See Ex 1005 at pp 5 6 and 9 ProntoEdit fully defines a Pronto user interface including all devices macro groups panel layouts button appearances and the behavior of all buttons Id The Panel defines a portion of the s
31. rol appliances for one or more users in one or more rooms to perform activities and to access favorites See Ex 1001 at Abstract The user may be able to specify a list of favorite channels for a number of categories The favorites lists may be synchronized with the channel lineup offered by a cable or satellite service provider Id at 12 14 18 The remote control application may provide one or more favorites pages containing button icons which the user may configure for direct access to his favorite programming e g example to cause the transmissions of commands to cause a device to tune to a favorite channel favorite device etc An exemplary favorites page is illustrated in FIG 17a Id at 19 25 45 Petition for Inter Partes Review of U S Patent No 7 831 930 FIGURE 17a The 930 patent further explains that iJt will also be appreciated that favorites pages may be specific to particular devices e g a satellite STB or a CD jukebox while in other instances favorites pages may span multiple devices in order to allow access to all of a user s favorite media content from a single point of access Id at 19 40 45 Independent claim 1 of the 930 patent is directed to software for a handheld device to allow multiple lists of favorite channels to be defined and accepting input to place the hand held device into a mode to control a home appliance and in response using that input to select the list of favor
32. structions executable by a processing device of a hand held device for displaying information to a user of the hand held device the instructions performing steps comprising 28 Petition for Inter Partes Review of U S Patent No 7 831 930 ProntoEdit discloses creating instructions CCF files executable by a Pronto remote controller to define a user interface on the remote controller See Ex 1005 at 5 and 6 see also Ex 1006 details of the Pronto remote control As the ProntoEdit refrence discloses ProntoEdit is the visual editor for Pronto configurations A Pronto configuration fully defines a Pronto user interface including all devices macro groups panel layouts button appearances and the behavior of all buttons direct access and left right keys including all IR codes See Ex 1005 at 5 Configuration view Panel view Pronit dit delal cet modina TV Pk E View Tock Pad Dovico Macro Group Solinas Window Hdp H CDR E MACRO GROUPS PHILIPS Thus ProntoEdit discloses to a person of ordinary skill the preamble of claim 1 See Ex 1008 at J 40 44 allowing a plurality of lists of favorite channels to be defined for display in a display of the hand held device and 29 Petition for Inter Partes Review of U S Patent No 7 831 930 Skilled artisans at the time understood that ProntoEdit allows a plurality of lists of favorite channels to be defined for display in a display of the hand
33. t Account Petition for Inter Partes Review of U S Patent No 7 831 930 HI REQUIREMENTS FOR INTER PARTES REVIEW As set forth below and pursuant to 37 C F R 42 104 each requirement for inter partes review of the 930 Patent is satisfied A Grounds For Standing Pursuant to 37 C F R 42 104 a Petitioner hereby certifies that the 930 Patent is available for inter partes review and that the Petitioner is not barred or estopped from petitioning for inter partes review of the 930 Patent on the grounds identified herein B Identification of Challenge Pursuant to 37 C F R 42 104 b the precise relief requested by Petitioner is that the PTAB cancel as unpatentable claim 1 of the 930 Patent 1 Claims for which inter partes review is requested Pursuant to 37 C F R 42 104 b 1 Petitioner requests inter partes review of claim 1 of the 930 Patent 2 The specific art and statutory grounds on which the challenge is based Pursuant to 37 C F R 42 104 b 2 inter partes review of the 930 Patent is requested in view of the following references each of which is prior art to claim 1 of the 930 Patent under one or more of 35 U S C 102 a b and or e Petition for Inter Partes Review of U S Patent No 7 831 930 1 Realistic Universal Remote Control Owner s Manual Cat No 15 1903 Realistic was published in 1989 by Tandy Corporation Realistic is prior art to the 930 patent at least under 35 U S
34. t include means plus function or step plus function limitations 4 How the construed claims are unpatentable under the statutory grounds identified in 37 C F R 42 104 b 2 Pursuant to 37 C F R 42 104 b 4 an explanation of how claim 1 of the 930 patent is unpatentable under the statutory grounds identified above including an identification of where each element is found in the prior art patents or printed publications is provided in Section VII B below 5 Supporting evidence relied upon to support the challenge Pursuant to 37 C F R 42 104 b 5 the exhibit numbers of the supporting evidence relied upon to support the challenges are provided in an exhibit list included herein The following text of the present Petition identifies the relevance of the evidence to the challenges raised and identifies specific portions of the evidence to support the challenges raised under the grounds of unpatentability Further supporting evidence including detailed discussions of the respective prior art references is provided in the Geier Declaration Ex 1008 Petition for Inter Partes Review of U S Patent No 7 831 930 IV SUMMARY OF THE 930 PATENT The 930 patent is directed to a hand held electronic device having a remote control application user interface that functions to displays operational mode information to a user The graphical user interface may be used for example to setup the remote control application to cont
35. tition for Inter Partes Review of U S Patent No 7 831 930 In Evans the microprocessor is coupled to a RAM and an LCD display Id at FIG 2 The RAM in Evans stores the program code and the LCD displays information Id at FIG 2 and 11 57 12 26 Evans discloses for example that in normal use the LCD can display information such as the name of the key or function of the code to be outputted Id at 11 57 12 26 3 ProntoEdit User Guide ProntoEdit Exhibit 1005 ProntoEdit is a user guide published in 2000 by Philips for a tool for configuring a remote control device with the trade name Pronto See Ex 1005 at pp 5 6 and 9 The User Guide for the Pronto remote control device itself specifically refers to ProntoEdit as a tool available from the Internet to personalize the Pronto remote control beyond its standard programming features See e g Ex 1006 at p 34 ProntoEdit fully defines a Pronto user interface including all devices macro groups panel layouts button appearances and the behavior of all buttons See Ex 1005 at pp 5 6 8 and 9 This user interface is disclosed in ProntoEdit as follows 19 Petition for Inter Partes Review of U S Patent No 7 831 930 Configuration view Panel view ae COR A MACRO GROUPS PHILIPS Id at p 5 6 In ProntoEdit the Panel defines a portion of the screen and can include buttons with corresponding actions Id at p 8 The Device includes a list
36. vice that the hand held device is to placed into a mode to control at least one of a plurality of home appliances and 30 Petition for Inter Partes Review of U S Patent No 7 831 930 ProntoEdit discloses that the defined user interface can be organized according to devices modes that can be selected by corresponding buttons See Ex 1005 at 5 Configuration view Panel view ig COR Q MACRO GROUPS The ProntoEdit reference teaches that ProntoEdit provides two complementary views on the current configuration On the left side of ProntoEdit s main window you ll find the configuration view a typical tree view of the overall structure of the current configuration At the top level of this tree view you ll find HOME DEVICES and MACRO GROUPS These top levels are associated with the home section the right hand side device menu and the left hand side macro group menu on your Pronto Id at 5 For example panels of favorite channels using Pronto were demonstrated by Aaron Hughart in early 2001 See Ex 1007 28 2 Petition for Inter Partes Review of U S Patent No 7 831 930 Thus ProntoEdit discloses to a person of ordinary skill accepting input to place the hand held device into a mode to control an appliance as required by claim 1 See Ex 1008 at 42 46 in response using the input to select at least one of the plurality of lists of favorite channels ProntoEdit discloses that any button
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