Remote Control Court Battle Brews

There’s a battle over the remote control underway, and it has nothing to do with two people fighting over a device that controls the TV.

Instead, it all centers around one remote control vendor, Universal Electronics Inc. (UEI), going after a rival, Universal Remote Control (URC), in the courts over a total of 13 patent claims.

UEI filed a lawsuit on June 28 in the U.S. District Court for the Central District of California alleging that URC is infringing on nine patents. UEI filed a suit in the same district court in March 2012 alleging that URC is infringing on four other patents. The latter case is still pending. UEI is seeking a permanent injunction in addition to undisclosed monetary damages against Universal Remote Control.

“The decision to move forward with this action was made only after all other options had been exhausted,” UEI chairman and CEO Paul Arling said, in a statement. “UEI has a significant investment in these technological advancements created over many years of innovation. Unfortunately, it sometimes becomes necessary to protect our investments through legal channels.”

In response, URC said it “strongly disagrees with UEI’s claims in the suit and will vigorously defend itself, as it has in the past, and seek all available remedies against UEI.” URC further contends that three of the nine patents in the latest suit have already expired, and a fourth will expire in about two months. Two of the patents named in the earlier lawsuit have already expired, URC added.

“URC is challenging the validity of the remaining claims of the three patents in court and in a review proceeding in the United States Patent and Trademark Office (PTO),” URC said in a statement. “URC believes that the inventions claimed in these patents were used in products already existing in the marketplace before UEI applied for patents claiming them as its inventions. Products and publications that are already available in the marketplace cannot and should not be patented by a third party since they are in the public domain.”

In the latest suit, UEI asserts infringement on the following nine U.S. patents:

  • No. 5,228,077: "Remotely Upgradable Universal Remote Control;"
  • No. 5,255,313: "Universal Remote Control System;"
  • No. 5,414,761: "Remote Control System;"
  • No. 5,552,917: "Remote Control;"
  • Reissued Patent No. RE39,059: “Computer Programmable Remote Control;”
  • No. 6,407,779: Method and Apparatus for an Intuitive Universal Remote Control System;"
  • No. 7, 126,468: "System and Method for Monitoring Remote Control Transmissions;"
  • No. 7,589,642: "Relaying Key Code Signals Through A Remote Control Device;" and,
  • No. 7,831,930: "System and Method for Displaying a User Interface for a Remote Control Application."

In the suit filed last March, UEI asserts infringement on these four U.S. patents:

  • No. 5,414,426: "Favorite Key Macro Command and Chained Macro Command in a Remote Control;"
  • No. 5,568,367: "Remote Control with Key Lighting;"
  • No. 5,614,906: “Method For Selecting a Remote Control Command Set;" and
  • No. 6,587,067 B2: "Universal Remote Control with Macro Command Capabilities.”

In May, UEI posted first quarter net income of $3.9 million on sales of $114.7 million, up from $103.7 million in the year ago period, noting that it is gaining traction with a strategy centered on embedding its technology into smartphones, tablets, smart TVs, game consoles and over-the-top services.  URC is privately held.