Paper 12
`Date: March 16, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01608
`Patent 7,895,532 B2
`____________
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`I. INTRODUCTION
`Roku, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claim 10 (“the challenged claim”) of U.S. Patent No. 7,895,532 B2
`(Ex. 1001, “the ’532 Patent”). Paper 2 (“Pet.”). Patent Owner Universal
`
`
`Date: March 16, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01608
`Patent 7,895,532 B2
`____________
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`I. INTRODUCTION
`Roku, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claim 10 (“the challenged claim”) of U.S. Patent No. 7,895,532 B2
`(Ex. 1001, “the ’532 Patent”). Paper 2 (“Pet.”). Patent Owner Universal
`
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`Patent 7,895,532 B2
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`Electronics, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). After we issued an order (Papers 8, 9) that granted
`authorization for additional briefing addressing a claim construction issue,
`Petitioner filed a Reply to the Preliminary Response (Paper 10 (“Pet.
`Reply”)) and Patent Owner filed a Sur-Reply to the Reply (Paper 11 (“PO
`Sur-Reply”)). We have authority under 35 U.S.C. § 314.
`Upon consideration of the Petition, Preliminary Response, and
`additional briefing, Petitioner has not demonstrated a reasonable likelihood
`that it would prevail in showing the unpatentability of the challenged claim
`of the ’532 Patent. We do not institute inter partes review.
`
`II. BACKGROUND
`A. Related Matters and Real Parties in Interest
`Petitioner and Patent Owner each state that the ’532 Patent is involved
`in Universal Electronics Inc. v. Roku, Inc., Case 8-18-cv-01580, in the
`Central District of California. Pet. 1; Paper 4 (Patent Owner’s Mandatory
`Notices) 2. Patent Owner additionally identifies as related eight other inter
`partes review petitions filed by Petitioner requesting review of other patents
`owned by Patent Owner. Paper 4, 2.
`Petitioner identifies only itself as the real party in interest. Pet. 1.
`Patent Owner also identifies only itself as the real party in interest. Paper 4,
`2.
`
`B. Overview of the ’532 Patent
`The ’532 Patent relates to “[a] hand-held electronic device having a
`remote control application user interface.” Ex. 1001, code (57). The device
`acts as a universal remote control application, consolidating the functionality
`of multiple remote controls for various consumer appliances. Id. at 1:14–22,
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`3:9–13. The device replaces the multiple remote controls by providing
`wireless control signals to emulate those sent by standard remote controls to
`the consumer appliances. Id. at 3:13–16.
`The ’532 Patent details a setup wizard that allows quick setup of the
`device to control a user’s appliances. Id. at 4:59–5:43, 14:56–15:53. User
`and room profiles may also be set up in order to provide functionality based
`on which user is operating the remote control application or on the location
`of the device. Id. at 15:54–17:35.
` “The remote control application may also provide for the automatic
`or semi-automatic configuration of macros (preprogrammed sequences of
`command actions which may be played back by pressing a single key) for
`common activities.” Id. at 17:38–41. “Macros provide a way for the user to
`perform a combination of tasks quickly.” Id. at 23:66–67. Two types of
`macros are described in the ’532 patent: system-generated macros, which
`“are generated automatically or semi-automatically” and user-generated
`macros, which are manually programmed. Id. at 23:67–24:10.
`Two examples of system-generated macros are included. In the first,
`an “all on” or “power” macro, several devices are powered on or powered
`off with the macro, for example, for turning all devices in a home theater
`system on or off. Id. at 11:54–67, 17:42–44. “To facilitate creation of this
`type of exemplary macro, the remote control application may, as part of a
`setup wizard, display to the user a list of all currently configured devices
`accompanied by ‘checkboxes’ in which the user may indicate which of these
`are to participate in an ‘all on’ macro.” Id. at 17:44–49 (element number
`elided), 11:54–67, Fig. 16g. The second example of system-generated
`macros concerns entry of input routing information indicating how the
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`controlled appliances are connected to each other by their input and outputs,
`to allow controls to be selected or set in order and thereby allow use of the
`appliances together. Id. at 17:53–67. This information may be provided by
`a user answering questions about the existing routing between the
`appliances, or indicating the existing routing using a drag and drop interface
`provided by the device. Id. at 17:54–63.
`User-generated macros, on the other hand, are described as being
`generated when a user “manually program[s] a sequence of actions to be
`assigned to a single button such that the sequence can be repeated by a press
`of the single button.” Id. at 24:7–10. In the example of this generation
`provided, a user enters an “activity setup wizard” and then “enter[s] a
`sequence of keystrokes to be stored as a macro.” Id. at 24:17–26; Figs. 22a–
`22g. The user may navigate among control pages for all the controlled
`appliances to switch to control pages for various appliances while entering
`keystrokes. Id. at 24:27–29; 19:63–20:12. “An example of a user generated
`macro might be a ‘Watch DVD Movie’ macro, which: 1) turns on the DVD
`Player; 2) turns the AMP to the DVD input; 3) turns on the TV; 4) sets TV
`input to ‘Video 1;’ and 5) plays the Movie.” Id. at 24:10–13.
`C. Challenged Claim
`The sole challenged claim, claim 10, is reproduced below, with
`bracketed notations, corresponding to notations in the Petition, added for
`reference.
`
`10. A method for automatically creating a sequence
`of instructions to be executed by a controlling
`device, comprising:
`
`
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`[10.1] presenting to a user a graphical user interface
`including a representations of at least one
`appliance controllable by the controlling device;
`
`Exhibit
`1006
`
`
`[10.2] using a program to automatically create the
`sequence of instructions to be executed by the
`controlling device such that the sequence of
`instructions reflects one or more interactions by
`the user with the representations of the at least
`one appliance controllable by the controlling
`device presented via the graphical user interface;
`and
`[10.3] causing the automatically created sequence
`of instructions to be executed by the controlling
`device in response to a selection of a user input
`element of the controlling device.
`Ex. 1001, 39:42–40:10.
`D. Evidence Relied Upon
`Reference
`Wugoski
`US 6,690,392 B1
`Humpleman et al.
`(“Humpleman”) WO 98/59282
`Harris et al.
`WO 01/69567
`(“Harris”)
`Walkenbach, J. (1999). Microsoft Excel
`2000 Bible. Wiley Publishing.
`(“Walkenbach”), pp. ix–xl, 755–784.
`Petitioner also relies upon the Declaration of Nenad Medvidovic,
`PhD. (Ex. 1011).
`
`Date
`Feb. 10, 2004
`
`Dec. 30, 1998
`
`1003
`
`Sept. 20, 2001
`
`1008
`
`1999
`
`1004
`
`5
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Claim Challenged
`35 U.S.C. §1 Reference(s)/Basis
`10
`103
`Humpleman and Walkenbach
`10
`103
`Wugoski
`10
`103
`Harris
`
`III. DISCUSSION
`A. Person of Ordinary Skill in the Art
`Petitioner asserts that:
`A POSITA at and before the priority date for the ’532
`Patent would have had a bachelor’s degree in electrical
`engineering, computer engineering, computer science, or a
`related subject, and two to three years of work experience in
`software programming. Less 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).
`Pet. 13 (citing Ex. 1011 ¶¶ 52–56). Patent Owner asserts that:
`A POSITA would have had a bachelor’s degree which
`involved user interface design or computer programming
`coursework, for example, electrical engineering, computer
`engineering, computer science, cognitive science, mechanical
`engineering, industrial engineering, or a similar degree, and at
`least two years of work experience in software programming,
`user interface design, ergonomics, industrial design, or human
`factors. Additional education might substitute for some of the
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), amended 35 U.S.C. § 103. Because the
`application from which the ’532 patent issued was filed before March 16,
`2013, the effective date of the relevant amendment, the pre-AIA version of
`§ 103 applies.
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`experience, and substantial experience might substitute for some
`of the educational background.
`Prelim. Resp. 9. Patent Owner notes that its expert, Mr. Bear, analyzed the
`prior art using both definitions and the differences did not affect the outcome
`of Mr. Bear’s analysis. Id. at 9–10 (citing Ex. 2001 (Declaration of Eric J.
`Gould Bear) ¶¶ 45–53). In the cited portion of the Patent Owner’s expert’s
`declaration, Mr. Bear opines that “Petitioner’s definition misses critical
`skills, such as human factors considerations.” Ex. 2001 ¶ 49. While
`Petitioner’s proposed definition does not include certain elements of Patent
`Owner’s proposed definition, e.g., “user interface design . . . coursework” or
`work experience in “user interface design, ergonomics, industrial design or
`human factors,” these elements are included in the Patent Owner’s definition
`in the alternative, rather than as a strict requirement for one of ordinary skill.
`For purposes of this Decision, we adopt Petitioner’s provided
`definition for the level of skill of a person of ordinary skill in the art as
`reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate
`level of skill in the art). Adopting the Patent Owner’s definition would not
`affect our analysis.
`B. Principles of Law
`A claim is unpatentable as obvious 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 said subject matter pertains.”
`35 U.S.C. § 103(a) (2012). 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
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`matter and the prior art; (3) the level of skill in the art; and (4) objective
`evidence of nonobviousness.2 Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17–18 (1966).
`Even if prior art references disclose all claim limitations when
`combined, there must be evidence to explain why a person of ordinary skill
`in the art would have combined the references to arrive at the claimed
`invention. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`1366–67 (Fed. Cir. 2012) (citing Innogenetics, N.V. v. Abbott Labs., 512
`F.3d 1363, 1374 (Fed. Cir. 2008) (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]”)).
`An invention “composed of several elements is not proved obvious merely
`by demonstrating that each of its elements was, independently, known in the
`prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather,
`“it can be important to identify a reason that would have prompted a person
`of ordinary skill in the relevant field to combine the elements in the way the
`claimed new invention does.” Id.
`An obviousness determination “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006));
`see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`2016).
`
`2 No argument or evidence concerning secondary considerations has been
`adduced.
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`We apply the same claim construction standard that is applied in civil
`actions under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R § 42.100(b)
`(2019); Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51340 (Oct. 11, 2018) (applicable to inter partes reviews filed on or after
`November 13, 2018). Under Phillips, claim terms are afforded “their
`ordinary and customary meaning.” Phillips, 415 F.3d at 1312 (quoting
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)).
`“[T]he ordinary and customary meaning of a claim term is the meaning that
`the term would have to a person of ordinary skill in the art in question at the
`time of the invention. . . .” Id. at 1313. “Claim construction begins with the
`words of the claim, which ‘must be read in view of the specification, of
`which they are a part.’” Wi-Lan, Inc. v. Apple, Inc., 811 F.3d 455, 462 (Fed.
`Cir. 2016) (quoting Phillips, 415 F.3d at 1312–15).
`C. Claim Construction
`Only terms that are in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner and Patent
`Owner discuss possible claim constructions for the term “using a program to
`automatically create the sequence of instructions.” Pet. 16–18; Prelim.
`Resp. 14–20. Petitioner and Patent Owner each put forward arguments
`relating to the term “causing the automatically created sequence of
`instructions to be executed by the controlling device in response to a
`selection of a user input element of the controlling device.” Prelim. Resp.
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`21–22; Pet. Reply; PO Sur-Reply. No other constructions are proposed by
`the parties, or necessary to complete our analysis.
`a. “using a program to automatically create the
`sequence of instructions”
`With respect to the term “using a program to automatically create the
`sequence of instructions,” Petitioner proposes that we construe the term to
`mean “creating the sequence of instructions without each instruction being
`explicitly programmed by the user.” Pet. 16–17. Petitioner supports its
`construction by noting that the ’532 Patent does not use the term
`“instructions” outside of the claims, and that “what is meant by
`‘automatically create the sequence of instructions’” is not clearly described
`by intrinsic evidence. Id. at 16.
`Patent Owner argues that Petitioner’s proposed construction “inject[s]
`arbitrary requirements” regarding programming and “lines of source code”
`that lack support from the intrinsic record. Prelim. Resp. 15–16. Patent
`Owner is correct that “[n]owhere in the claims, specification, or file history
`is coding or lines of code ever mentioned even once.” Prelim. Resp. 16.
`While the word “coding” or “code” is not in Petitioner’s proposed
`construction, Petitioner does not show any support in the intrinsic record for
`the programming of instructions by a user referred to in Petitioner’s proposal
`on construction. See Pet. 16–17. Rather than clarifying the meaning,
`adopting this construction would introduce additional issues regarding what
`it means for an instruction to be (or not be) “explicitly programmed by the
`user.” Therefore, we decline to adopt Petitioner’s construction.
`Patent Owner proposes a construction of “created without user input
`corresponding to every step of the created sequence of instructions,” which
`it characterizes as the plain and ordinary meaning of the term. Prelim. Resp.
`
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`14. However, Patent Owner does not explain or provide support for the
`meaning of a “step” of the sequence of instructions. Additionally,
`depending on the meaning of “every step of the created sequence of
`instructions,” this construction may not be consistent with one of the
`embodiments Petitioner cites relating to “automatic or semi-automatic
`configuration of macros”—the embodiment in which checkboxes allow a
`user to indicate which devices are to participate in an “all on” macro. Id. at
`18 (citing Ex. 1001, 17:36–67). In such an embodiment, it appears there is
`“user input” (by checking a checkbox) corresponding to each device which
`is to be powered on. See Ex. 1001, 11:54–67, 17:36–67, Fig. 16g. Thus the
`Specification describes a situation in which there is user input corresponding
`to every step of the created sequence of instructions which turns on or off all
`devices corresponding to the user input. Thus, we also do not adopt Patent
`Owner’s construction.
`Both parties’ proposed claim construction arguments reflect what
`appears to be the parties’ mutual understanding that there may be user input
`involved in the “automatic[] creat[ion] of the sequence of instructions” per
`this claim term. See Pet. 17–18; Prelim. Resp. 18–19. We agree, as this is
`consistent with the claim language’s requirement that user interactions be
`reflected in the sequence of instructions created, and with the ’532 Patent’s
`description of user input involved in creating “automatically or semi-
`automatically” generated macros. Ex. 1001, 17:38–49, 17:53–67, 23:67–
`24:10; see Ex. 1012, 41–42 (determination in the order regarding claim
`construction in the related litigation that “the claim language itself
`demonstrates that at least some user input may be associated with an
`‘automatically created’ sequence of instructions”).
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`But Petitioner contends that the claimed automatic creation is
`consistent with the process that the ’532 Patent describes as “manually”
`creating a macro—the programming by a user of a sequence of actions to be
`assigned to a single button as shown in Figures 22a–22g and related
`disclosure. Pet. 8–9 (citing Ex. 1001, 24:7–47, Figs. 22a–22g; Ex. 1011
`¶ 47). Patent Owner argues that a proper understanding of the claim term
`should not encompass manually created macros, which in the ’532 Patent are
`distinct from “automatically or semi-automatically” created macros. See
`Prelim. Resp. 17–18 (citing Ex. 1001 23:67–24:10; Ex. 2001 ¶¶ 93–103).
`We agree with Patent Owner. The Specification describes “two types of
`macros”—one “system generated” (automatically or semi-automatically)
`and one “user generated” such as a macro created when “the user . . .
`enter[s] a sequence of keystrokes to be stored as a macro.” Ex. 1001, 23:66–
`24:10, 24:25–29, 19:67–20:19. Petitioner does not show support for a
`construction that would encompass the manually-created macros that are
`specifically described as distinct from the “automatically or semi-
`automatically” created macros.
`For these reasons we decline to adopt either proposed construction.
`Instead we determine that a macro generated when a user “manually
`program[s] a sequence of actions to be assigned to a single button such that
`that sequence can be repeated by a press of the single button” (Ex. 1001,
`24:7–10) is not encompassed by the claim limitation. Beyond this, we do
`not deem it necessary to adopt a specific construction to resolve the
`controversy. Vivid Techs, 200 F.3d at 803.
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`b. “causing the automatically created sequence of
`instructions to be executed by the controlling device
`in response to a selection of a user input element of
`the controlling device”
`Petitioner did not initially request construction of this term, but Patent
`Owner argues in the Preliminary Response that we should adopt the District
`Court’s construction of “selection of a user input element separate from the
`one or more user interactions involved in creating the sequence of
`instructions.” Prelim. Resp. 21 (citing Ex. 1012, 45). We note that the
`District Court construction was not a construction of the entire limitation
`[10.3] that Petitioner identifies, but rather of the term “selection of a user
`input” in limitation [10.3]. Ex. 1012, 45; Pet. Reply 1.
`Patent Owner reviews and advocates for adoption of the District
`Court’s determinations and reasoning. Prelim. Resp. 21–22. The District
`Court’s construction was based on its determination that, as this term relates
`to “the automatically created sequence of instructions” (emphasis added),
`the method step of limitation [10.3] must temporally follow the step of
`limitation [10.2], in which a program is used “to automatically create the
`sequence of instructions.” Ex. 1012, 46–47 (“Claim 10 . . . requires creating
`a sequence of instructions first and executing that automatically created
`sequence of instructions second.”). Thus, the District Court determined that
`“these claim limitations support that a user first interacts with an interface to
`create a sequence of instructions, and then separately executes those
`‘automatically created’ instructions by pressing a particular button on the
`controlling device.” Id. at 47.
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`Petitioner’s arguments address what the impact of adopting the
`proposed construction would be, but Petitioner does not propose an alternate
`construction. Pet. Reply passim.
`We agree with the District Court’s determination that the step of
`“causing the automatically created sequence of instructions to be executed
`…” ([10.3]) must occur after the creation in the “using a program to
`automatically create the sequence of instructions . . .” limitation ([10.2]), and
`the balance of the District Court’s reasoning. We construe “selection of a
`user input element” as “selection of a user input element separate from the
`one or more user interactions involved in creating the sequence of
`instructions.”
`D. Overview of the Prior Art
`1. Humpleman (Ex. 1003)
`Humpleman discloses a single control device controlling a plurality of
`different devices. Ex. 1003, 2:26–31. The devices to be controlled are each
`associated with one or more HTML files that define the control and
`command functions for that device. Id. at 10:16–18. A device with a screen
`receives and interprets these files and provides the ability for a user to
`interact with these HTML files to control the device. Id. at 10:25–11:9.
`Additionally, properties for each home device may be stored; these
`properties may include the device manufacturer, the device name, type, and
`model, and the URL for the device manufacturer. Id. at 12:29–13:2. A logo
`image file for the manufacturer and one or more icon image files
`representing the type and state of the device are also stored for each home
`device. Id. at 13:3–7, 13:31–14:19.
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`In Humpleman, a user interacts with a device link page, on which a
`home device button is displayed for each home device controlled, in order to
`control various home devices and interactions between them. Id. at 18:4–11,
`21:18–28:25. This allows a user to select a service, such as choosing a
`digital television for viewing a particular show, tuning direct broadcast
`satellite service (DBSS) equipment to a particular station that is carrying that
`show, and controlling the communication between the DBSS equipment to
`the digital television. Id. at 20:11–19, 21:18–23, 26:20–27:12, 28:10–12.
`Because a user must typically perform a sequence of steps to execute
`a particular service, Humpleman provides the ability to save a sequence of
`steps as a macro to reduce the work required for the user. Id. at 29:13–
`31:14. A macro may be executed by selecting a macro button on a macro
`list page. Id. at 30:19–25, 31:6–9.
`One way to generate macros is to request that the current device
`parameters be saved for later execution; this is termed a “preset” macro. Id.
`at 30:5–21. Another type of macro is termed a “player piano macro”—this
`“is created by a home device’s software and/or hardware saving the
`particular steps taken by a user while interacting with the device’s HTML
`pages (e.g., the user's button selections, data entries and/or cursor
`movements are saved as they are executed by the user).” Id. at 30:26–29.
`“When the player piano macro executes, it performs the particular sequence
`of instructions as if the user was accessing the respective home device
`HTML page(s) and executing the sequence of steps directly.” Id. at 30:30–
`33. A macro may be executed by selecting a macro button on a macro list
`page. Id. at 30:19–25, 31:6–9.
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`2. Walkenbach (Ex. 1004)
`The Walkenbach exhibit is selections, namely front matter and
`chapter 35, from a book for users of Microsoft Excel 2000. Ex. 1004, ix.
`Chapter 35 is entitled “Using Visual Basic for Applications,” and provides
`“an introduction to the Visual Basic for Applications (VBA) macro
`language.” Id. at 755. Walkenbach describes VBA as “enabl[ing] [a user]
`to develop simple macros and execute macros that are developed by others.”
`Id.
`
`Walkenbach describes Excel as providing two ways for the user to
`create macros: “[t]urn on the macro recorder and record your actions,” or
`“[e]nter the code directly into a VBA module.” Id. at 760. To record a VBA
`macro a user can record actions as a macro and then “simply replay the
`macro” without looking at code that’s generated. Id. Walkenbach describes
`how to use Excel to record a macro. Id. at 760–762. Walkenbach also
`describes how to set a key combination or toolbar button that will execute a
`macro. Id. at 761, 770. Walkenbach describes how the code Excel generates
`to be executed when the macro is invoked can be viewed by a user. Id. at
`762–764.
`
`3. Wugoski (Ex. 1006)
`Wugoski describes a system including multiple devices in which
`commands are used to carry out specific functions. Ex. 1006, 3:65–6:50.
`Because “[s]ome users tend to perform sequences of commands in a habitual
`manner,” macros are used to access recorded sequences for execution. Id. at
`6:50–58.
`In Wugoski, a user can elect to define a macro, and the user’s actions
`are recorded and can be stored as a macro. Id. at 7:67–8:50, Fig. 5. An
`
`16
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`IPR2019-01608
`Patent 7,895,532 B2
`
`alternative way to define a macro occurs by monitoring the user’s use of the
`system to enter commands; when a sequence of commands has been entered
`by a user more than a threshold number of times, the user is prompted to
`define a macro for that sequence. Id. at 8:56–10:6, Fig. 6.
`4. Harris (Ex. 1008)
`Harris describes a remote control system “for providing efficient and
`simple operation of a plurality of electronic devices as a coordinated system
`based on an overall task.” Ex. 1008, code (57). The system recognizes all
`the electronic devices to be controlled and their current state (e.g., on/off,
`current input/output). Id. at 16:6–9, 17:1–12. When a user selects a task,
`that pre-task state of the electronic devices is used in order to determine
`what signals to send to the devices to achieve the task. Id., code (57),
`17:29–18:4, Figs. 11a, 11b. For example, in a system that controls a CD
`player and television, if a user selects a “watch television” task when the CD
`player is powered on and playing a CD and the television powered off, the
`system would turn off the CD player and turn on the television, adjust the
`volume, etc. Id. at 18:10–20:8, Figs. 11a, 11b. However, if the system also
`contained a VCR that was powered off, no action would be taken with
`respect to the VCR to implement the “watch television” task. Id. at 18:10–
`20:8.
`E. Alleged Unpatentability of Claim 10 over Humpleman and
`Walkenbach
`Petitioner argues that claim 10 is unpatentable because it would have
`been obvious over a combination of Humpleman and Walkenbach. Pet. 21–
`34. Petitioner argues that one of ordinary skill in the art would have been
`motivated to combine the teachings of Humpleman and Walkenbach, and
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`would have had a reasonable expectation of success in doing so. Id. at 29–
`31 (citing Ex. 1011 ¶¶ 96–99).
`Petitioner argues that Humpleman discloses or renders obvious the
`preamble of claim 10 (“method for automatically creating a sequence of
`instructions to be executed by a controlling device”) in its disclosure
`regarding a “player piano macro” in which a sequence of commands is saved
`in memory at a controlling device, and when the sequence is requested to be
`executed, the controlling device sends “control and command” information
`to a controlled device. Id. at 21–22 (citing Ex. 1003, 31:1–2, 29:23–26;
`Ex. 1011 ¶¶ 76–79). Petitioner also argues that Humpleman discloses or
`renders obvious limitation [10.1] of claim 10, “presenting to a user a
`graphical user interface including a representations of at least one appliance
`controllable by the controlling device” in Humpleman’s disclosure of HTML
`pages including graphical user interfaces for controlling home devices. Id.
`at 22 (citing Ex. 1003, 6:3–5). Petitioner cites Humpleman’s Figures 6 and
`7, which present device images and logos that Petitioner argues are
`representations of controllable appliances. Id. at 23–25 (citing Ex. 1003,
`19:9–11, 19:15–17, 35:2–10, 35:13–14, Figs. 6, 7; Ex. 1011 ¶¶ 80–88).
`Petitioner further argues that Humpleman’s “player piano” macro
`creation process, by which user interactions are interpreted as particular
`actions and the respective actions are stored in a macro file, teaches or
`suggests the creation of the sequence of instructions recited in limitation
`[10.2]. Id. at 25–26 (citing Ex. 1003, 31:2–6; Ex. 1011 ¶ 90). Petitioner
`argues that Walkenbach describes a “macro recorder” that translates user
`actions into code. Id. at 26–29 (citing Ex. 1004, 761–764; Ex. 1011 ¶¶ 91,
`93–95). Combining these teachings would have resulted, according to
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`Petitioner, in the automatic creation of code, that is, of the “sequence of
`instructions” of limitation [10.2]. Id. Petitioner argues that the code would
`reflect “interactions by the user,” as the button selections of Figures 6 and 7
`are used in the creation of Humpleman’s player piano macro. Id. at 31–32
`(citing Ex. 1003, 10:15–19, 30:26–29; Ex. 1011 ¶ 100).
`Patent Owner argues one of ordinary skill would not have been
`motivated to combine Humpleman and Walkenbach, but does not address
`Petitioner’s discussion of the motivation. Prelim. Resp. 41–42; see Pet. 29–
`30. More persuasively, Patent Owner argues that “Humpleman describes the
`exact type of manual entry of steps by a user successfully distinguished from
`the prior art during prosecution.” Prelim. Resp. 42–43; see id. at 36. We
`agree. Humpleman teaches that the player piano macro “save[s] the
`particular steps taken by a user while interacting with the device’s HTML
`pages” and “[w]hen the player piano macro executes, it performs the
`particular sequence of instructions as if the user was accessing the respective
`home device HTML page(s) and executing the sequence of steps directly.”
`Ex. 1003, 30:26–33. We determine that a macro generated when a user
`“manually program[s] a sequence of actions to be assigned to a single button
`such that that sequence can be repeated by a press of the single button” is not
`encompassed by the proper construction of limitation [10.2]. See supra
`§ III.C.a. Even if, as Petitioner argues, a combination of Humpleman and
`Walkenbach would teach or suggest that the particular steps taken by the
`user to be repeated later would be stored in the form of computer code, this
`distinction does not change the fact that Petitioner relies upon Humpleman’s
`teachings regarding a user manually programming a sequence of actions
`which is repeated when the macro is sele
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