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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`UNIVERSAL REMOTE CONTROL, )
`
`INC., ) No. IPR2013-00127
`
` Petitioner, ) Patent 6,587,067 C1
`
` vs. )
`
`UNIVERSAL ELECTRONICS, INC., )
`
` Patent Owner, )
`
`_____________________________)
`
` ATTORNEYS' EYES ONLY
`
` DEPOSITION OF PATRICK H. HAYES
`
` Irvine, California
`
` Wednesday, December 11, 2013
`
` Volume I
`
`Reported by:
`
`SHARON LINDSAY-MILNIKEL
`
`CSR No. 5335
`
`Job No. 1778691
`
`PAGES 1 - 97
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`Veritext National Deposition & Litigation Services
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`Page 1
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`Universal Remote Control, Inc. v. Universal Electronics, Inc. Exhibit 1016, Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`UNIVERSAL REMOTE CONTROL, )
`
`INC., ) No. IPR2013-00127
`
` Petitioner, ) Patent 6,587,067 C1
`
` vs. )
`
`UNIVERSAL ELECTRONICS, INC., )
`
` Patent Owner, )
`
`_____________________________)
`
` ATTORNEYS' EYES ONLY
`
` DEPOSITION OF PATRICK H. HAYES
`
` Irvine, California
`
` Wednesday, December 11, 2013
`
` Volume I
`
`Reported by:
`
`SHARON LINDSAY-MILNIKEL
`
`CSR No. 5335
`
`Job No. 1778691
`
`PAGES 1 - 97
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`Page 1
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`Universal Remote Control, Inc. v. Universal Electronics, Inc. Exhibit 1016, Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`UNIVERSAL REMOTE CONTROL, )
`
`INC., ) No. IPR2013-00127
`
` Petitioner, ) Patent 6,587,067 C1
`
` vs. )
`
`UNIVERSAL ELECTRONICS, INC., )
`
` Patent Owner, )
`
`_____________________________)
`
` Deposition of PATRICK H. HAYES, Volume I, taken
`
`on behalf of Petitioner, at 3161 Michelson Drive,
`
`Suite 1000, Irvine, California, beginning at
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`1:29 p.m. and ending at 4:12 p.m. on Wednesday,
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`December 11, 2013, before SHARON LINDSAY-MILNIKEL,
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`Certified Shorthand Reporter No. 5335.
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`A P P E A R A N C E S :
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`F o r P e t i t i o n e r :
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` S C H W E G M A N L U N D B E R G W O E S S N E R
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` B Y : T H O M A S C . R E Y N O L D S
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` A t t o r n e y a t L a w
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` 1 5 0 A l m a d e n B o u l e v a r d , S u i t e 7 5 0
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` S a n J o s e , C a l i f o r n i a 9 5 1 1 3
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` ( 4 0 8 ) 2 7 8 - 4 0 5 8
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` t r e y n o l d s @ s l w i p . c o m
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`F o r P a t e n t O w n e r :
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` G R E E N B E R G T R A U R I G
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` B Y : E R I C J . M A I E R S
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` A t t o r n e y a t L a w
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` 7 7 W e s t W a c k e r D r i v e , S u i t e 2 5 0 0
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` C h i c a g o , I l l i n o i s 6 0 6 0 1
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` ( 3 1 2 ) 4 5 6 - 1 0 3 6
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` m a i e r s e @ g t l a w . c o m
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`Universal Remote Control, Inc. v. Universal Electronics, Inc. Exhibit 1016, Page 3
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`
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`ATTORNEYS EYES ONLY
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` INDEX
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`WITNESS EXAMINATION
`
`PATRICK H. HAYES
`
`Volume I
`
` BY MR. REYNOLDS 5, 90
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` BY MR. MAIERS 87, 95
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` EXHIBITS
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` (None)
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`ATTORNEYS EYES ONLY
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` Irvine, California, Wednesday, December 11, 2013
`
` 1:29 p.m.
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` PATRICK H. HAYES,
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` having been administered an oath, was examined and
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` testified as follows:
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` EXAMINATION
`
` BY MR. REYNOLDS:
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` Q Mr. Hayes, can you state your full name for
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` the record and spell it.
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` A Sure.
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` Patrick Hayn Hayes. Patrick, P-a-t-r-i-c-k,
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` Hayn, H-a-y-n, Hayes, H-a-y-e-s.
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` Q And where do you reside?
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` A Mission Viejo, California.
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` Q Have you ever been deposed before?
`
` A Yes.
`
` Q How many times?
`
` A Five or six times.
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` Q Were any of those patent-related cases?
`
` A Yes.
`
` Q How many of them?
`
` A Three that I recall.
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` Q Did any of those involve UEI?
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` A All three involved UEI.
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` Q Do you remember the parties?
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` A One was UEI -- or Philips versus UEI, and two
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` were both UEI versus URC.
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` Q Given that you've done this before a few
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` times --
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` A Yes.
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` Q -- I'll skip all of the prefatory stuff and
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` just remind you to please wait until I finish my
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` question before you provide the answer so that we can
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` have a clean record.
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` Are you on any kind of medication today that
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` would prevent you from truthfully testifying?
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` A No.
`
` Q Any other reason why you wouldn't be able to
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` give me your best testimony today?
`
` A No.
`
` Q Did you prepare for today's deposition?
`
` A Yes, I did.
`
` Q Did you meet with someone?
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` A Yes, I met with Mr. Maiers.
`
` Q For how long.
`
` A About four hours yesterday and four hours
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` today -- I take it back, three hours today.
`
` Q In the course of those meetings, did you
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` review any documents?
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` A Yes.
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` Q What documents did you review?
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` A We reviewed my declaration.
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` I reviewed some patents, the '067 and the
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` '511.
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` I reviewed Dr. Herr's declaration.
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` And I reviewed a -- portions of the file
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` history of the '067 reexamination, the '067 patent, the
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` '810 file history, portions thereof.
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` And some Microchip data sheets, -- press
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` releases, I should say, not data sheets.
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` Q What were the Microchip press releases?
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` A It was a press release related to Microchip's
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` announcement of PIC processor, P-I-C, with an EEPROM,
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` electrically erasable programmable read-only memory.
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` Q Do you recall the date of that press release?
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` A It was early 1993.
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` Q What was the purpose of reviewing that
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` document?
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` A In Dr. Herr's declaration, he made the
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` statement that -- he appeared to imply that Microchip
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` had offered a PIC processor with EEPROM capability
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` during the time frame that we are considering, as far
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` as prior art for the '067 patent priority date -- prior
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` to the priority date or in the same time frame as the
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` priority date of the '067 patent.
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` That was not my recollection of when Microchip
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` offered that product. I researched that on Wikipedia,
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` found the comment on Wikipedia, without citation. And
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` as a result of that, I searched Microchip's press
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` release archives and found the press release describing
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` their announcement of their first chip with EEPROM
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` capability.
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` Q And said -- was that 1993?
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` A It was early 1993, which matched my
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` recollection.
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` Q Did that device have a particular model number
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` beyond PIC?
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` A Yeah. I don't recall it right off the top of
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` my head. I could look at the press release and tell
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` you.
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` Q I'm going to show you what's been marked as
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` Exhibit 2006, which a copy of your declaration.
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` Do you recognize that document?
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` A Yes, I do.
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` Q And is that your signature on page 16 of the
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` document?
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` A Yes, it is.
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` Q And you executed it on September 17th, 2013?
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` A That is correct.
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` Q Did you prepare this Exhibit 2006 document?
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` A This specific document?
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` Q Correct?
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` A No.
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` Q Who did?
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` A I don't know for a fact exactly who did. It
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` was prepared with my input by members of the GT law --
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` GT law firm.
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` I discussed this with Mr. Maiers. I said --
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` we had considerable conversation considering my
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` opinions and my -- after my review of Dr. Herr's
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` declaration, I believe there was some E-mail exchange
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` between us, and this clean draft was drafted by
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` somebody in his office with -- based on the input that
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` I provided.
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` Q Do you know approximately how long it took to
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` draft the declaration?
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` MR. MAIERS: Objection to form.
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` THE WITNESS: Well, this particular
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` declaration, I don't know, since I didn't draft it, but
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` it was the result of several weeks' worth of
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` discussion.
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` BY MR. REYNOLDS:
`
` Q Just so we're clear, that was probably
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` unartfully phrased, but how long from the start of the
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` time that you began working on the declaration until
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` the finished form, as we see it, in Exhibit 2006?
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` MR. MAIERS: Objection to form.
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` THE WITNESS: I'm not sure I fully understand
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` the question.
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` Are you talking about the specific particular
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` document or the discussions that led up to it?
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` BY MR. REYNOLDS:
`
` Q Let me try it a different way. So you signed
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` this on September 17th, 2013, correct?
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` A Correct.
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` Q When was the first time that you discussed
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` with anyone having a declaration in connection with
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` this matter?
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` A Probably three or four days before that.
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` Q So three or four days before December 17th,
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` 2013?
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` A I think you mean to say September 17th.
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` Q I'm sorry, thank you. Yes, I did mean
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` September 17th.
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` A Yes. Yes.
`
` Q On page 17 of Exhibit 2006 -- that's the last
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` page of your declaration -- there are several documents
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` listed.
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` Did you review all of those in connection with
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` your declaration?
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` A Yes. Not necessarily in that four-day period,
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` though.
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` Q What other times would you have reviewed those
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` documents?
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` A Well, I certainly reviewed the items that
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` you've listed as Paper 6, Paper 12 and Paper 13 as
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` those particular items were filed or issued at the
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` patent office, the dates would have been shortly after
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` they were filed and they became publicly available. I
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` don't have those dates in front of me.
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` I certainly was quite familiar with the '067
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` patent, I had reviewed that from time to time in the
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` past.
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` I was familiar with the '511 patent and the
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` '439 patent and the '200 patent, again, from years ago,
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` previous -- previous instances in which those were
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` cited as purported prior arts to the '067 and its
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` family members.
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` I had seen the CORE Reference Manual, again,
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` in previous proceedings.
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` The Magnavox, the Herr declaration, I saw
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` shortly before preparing this.
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` And -- that's interesting, we seem to have the
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` '067 patent listed twice here. I just noticed that
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` right now. Forgive us the error.
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` And I had -- sorry -- let me kill this --
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` excuse me -- I should have switched my phone off.
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` Q You just reminded me to do the same, so that's
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` fine.
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` A Where was I? Oh. I reviewed the Magnavox
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` press release, Exhibit 1006, and the Herr declaration
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` shortly -- in that period shortly before -- before this
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` was prepared.
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` And I had reviewed parts of the claim
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` construction order, again, when that was issued in
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` February.
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` And then the last item on the list is a
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` duplication of one of the previous items, as I pointed
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` out.
`
` Q Do you recall reviewing any other documents,
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` other than those listed on the last page of your
`
` declaration, in connection with the preparation of your
`
` declaration?
`
` A I believe I looked at one other patent in that
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` family related to the Rumbolt patent, the '511 patent.
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` I can't remember the exact number at this time. I
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` could certainly find it.
`
` Q Was it also a patent issued to Rumbolt or to
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` someone else?
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` A It was issued to Rumbolt's co-inventor,
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` McIntyre, and assigned to North American Philips.
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` Again, that was a patent I was familiar with
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` and I reviewed it to refresh my memory of it.
`
` Q Why were you familiar with that patent?
`
` A I had come across it in previous instances.
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` One of my job duties, when I was employed at Universal
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` Electronics, was monitoring competitors' intellectual
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` property, and Philips clearly was a competitor.
`
` Q I would like to turn your attention to
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` paragraph 3 of your declaration.
`
` A All right.
`
` Q There you indicate that between the years of
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` 1969 and 1973 you worked for South African Railroad
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` Administration.
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` Did any of your duties there relate to the
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` design of remote controls?
`
` A Well, in the general sense, yes. A lot of
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` what I did there was related to remote control of
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` electrical switchgear, remote control of pipeline
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` systems via a microwave link and data communications.
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` Yeah, I believe that -- that characterizes the remote
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` control aspects of that.
`
` Q What kind of devices were used to do the
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` remote control of the various things that you listed?
`
` MR. MAIERS: Objection to form.
`
` THE WITNESS: Well, that's -- that's a rather
`
` a broad question. Pushbuttons, switches, transmission
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` systems, valves, solenoids, electrical switchgear,
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` whatever was necessary to effect control of some device
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` or process from a distance.
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` BY MR. REYNOLDS:
`
` Q Were any of the devices handheld devices?
`
` A Not that I recall.
`
` Q Were any of the devices that were controlled
`
` remotely consumer products, such as televisions, things
`
` of that sort?
`
` MR. MAIERS: Objection to form.
`
` THE WITNESS: Not that I recall.
`
` BY MR. REYNOLDS:
`
` Q In paragraph 4 of your declaration you
`
` indicate that between 1973 and 1975 you worked for a
`
` Computer Sciences Sigma Ltd.
`
` Did your work there involve the design of
`
` remote controls?
`
` A No, that work was network system programming,
`
` computer programming for network systems, operating
`
` systems and data transmission systems.
`
` Q In paragraph 5 you indicate that between 1975
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` and 1987 you worked for a Computer Automation
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` Incorporated, later SyFA Data Systems.
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` Did any of your work there involve the design
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` of remote controls?
`
` A No, that was computer networking, data
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` transmission and communication techniques, transmission
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` protocols and the like.
`
` Q In paragraph 6 you indicate that between the
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` years 1987 and 1992 you worked for Lear Siegler
`
` Incorporated.
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` Did any of your work there involve the design
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` of remote controls?
`
` A No. That work involved digital telephony
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` systems, ISDN systems -- it's ISDN, acronym -- data
`
` communications, digital communications, transmission
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` schemes and the like.
`
` Q And in paragraph 7 you indicate that between
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` 1992 and 2013 you worked for UEI.
`
` I think, earlier on, you indicate that you
`
` recently retired from full-time employment from UEI; is
`
` that correct?
`
` A That's correct.
`
` Q When did that occur?
`
` A February of this year.
`
` Q Do you currently have any other full-time
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` employment?
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` A No.
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` Q So is your only employment currently the
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` occasional consulting for UEI that you refer to in
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` paragraph 1?
`
` A Correct.
`
` Q Since February of 2013 and you retired, how
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` much consulting have you done for UEI?
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` MR. MAIERS: Objection to form.
`
` THE WITNESS: I couldn't really answer that
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` question without looking at my work logs, but I would
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` take a wild stab at it and say probably a hundred hours
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` or so, at most.
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` BY MR. REYNOLDS:
`
` Q I'd like to go back to paragraph 7 of your
`
` declaration, which relates to the years that you were
`
` at UEI working full time for them, and ask you to
`
` briefly describe for me what your primary duties were
`
` for each of the various positions that you list here.
`
` So let's start with director of software
`
` development.
`
` A Okay. Well, as director of software
`
` development, I was responsible for all -- all firmware,
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` embedded firmware that went into remote control
`
` products as well as all of the support systems on PCs,
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` and the like, that had to do with developing that
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` firmware and with maint- -- capturing and maintaining
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` the library of codes and data that were programmed into
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` those remote controls.
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` And that included both, as I indicated,
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` firmware development, embedded firmware, assembly
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` programming as well as high-level programming for PC
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` systems that -- that performed the compilation of
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` libraries that were loaded into those remote controls.
`
` Q Were you finished with your answer?
`
` A Yes.
`
` Q Okay. And do you recall, roughly, when you
`
` held the title of director of software development?
`
` A It was from 1992 until -- and I'm really
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` guessing -- around '95, or thereabouts.
`
` Q Let's move to vice president of technology
`
` development. Let's start first with the years.
`
` Do you recall roughly what years you held that
`
` title?
`
` A That was '95 through probably 2000 -- 2000 --
`
` again, I'm not really 100 percent certain of dates.
`
` Q And what were your major responsibilities in
`
` that role?
`
` MR. MAIERS: Objection to form.
`
` THE WITNESS: They were similar to the
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` previous role except that this -- the focus of this
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` position was on future new technologies and new
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` products as opposed to day-to-day routine products.
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` BY MR. REYNOLDS:
`
` Q The next position listed is vice president of
`
` core technology.
`
` Do you recall what years you held that title?
`
` A That was from roughly the end of the previous
`
` one, so around about the 2000 time frame through about
`
` 2007, maybe.
`
` Q And what were your primary responsibilities in
`
` that role?
`
` A That was maintenance or development of
`
` technology and maintenance of the core database of
`
` infrared codes of the major product lines, the
`
` day-to-day embedded firmware that went into UEI's
`
` remote control products and also -- and I should have
`
` mentioned, in the previous position, as well -- an
`
` additional responsibility was the identification of
`
` intellectual property and the interfacing with our
`
` patent -- outside patent counsel, both of this position
`
` and the immediately previous position.
`
` Q When you say "the identification of
`
` intellectual property," do you mean of UEI's or of
`
` outside companies?
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` A I mean both.
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` Q So did you regularly monitor outside
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` companies' intellectual property?
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` A I did from time to time, yes -- competitors'
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` intellectual property.
`
` Q What companies were considered to be
`
` competitors?
`
` A Philips, Ruwido, that's R-u-w-i-d-o, SMK,
`
` Alps, that's A-l-p-s, Alps, Universal Remote Control,
`
` of course, and probably a few others that escape my
`
` recollection right now.
`
` Q The last position listed there is of vice
`
` president of intellectual property.
`
` During approximately what years did you hold
`
` that title?
`
` A That was from the end of the previous -- oh,
`
` again, roughly -- very roughly 2007-ish time frame
`
` through my retirement.
`
` Q And what were your primary responsibilities in
`
` that role?
`
` A Focused primarily on, once again,
`
` identification of intellectual property, prosecution of
`
` patents for UEI, monitoring of competitors'
`
` intellectual property, and management of the -- of the
`
` UEI patent portfolio, which had grown quite large by
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` that time.
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` Q How large was the portfolio at that time?
`
` A I'd say a hundred to 200 patents -- issued and
`
` pending, I should say.
`
` Q Did you have any patent committees at UEI?
`
` A Yes.
`
` MR. MAIERS: Objection to form.
`
` BY MR. REYNOLDS:
`
` Q Were you a part of any of those patent
`
` committees?
`
` A Yes. I chaired the patent committee.
`
` Q There was just one?
`
` A There was one patent committee, yes.
`
` I should mention, I also chaired the patent
`
` committee of Computer Automation, now that you reminded
`
` me and refreshed my recollection, between 1985 -- 1975
`
` and 1987.
`
` Q In paragraph 8 of your declaration you
`
` indicate that you are named inventor on over 60 granted
`
` and pending U.S. patents and patent applications.
`
` Were all of those filed while you were an
`
` employee of UEI?
`
` A I believe that is correct.
`
` Q Because you also indicate that "the majority
`
` of which relate to universal remote control
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` technology."
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` Were there some that did not relate to
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` universal remote control technology?
`
` A There might have been some that are
`
` applicable, generally applicable, and weren't specific
`
` to universal remote control technology.
`
` Q So as a result of your experience, do you
`
` consider yourself to be an expert in the design of
`
` universal remote controls?
`
` A I do.
`
` Q Have you had experience on the hardware side
`
` of designing universal remote controls?
`
` A Indirectly, yes.
`
` Q What do you mean when you say "indirectly"?
`
` A Well, while I've never managed a group of
`
` hardware engineers, in developing embedded firmware,
`
` the relationship between the firmware and the hardware
`
` is extremely close so the people working at that level
`
` have to have a very thorough knowledge of the hardware
`
` functioning of the device that their firmware is
`
` targeted to.
`
` So, of necessity, anybody working in that --
`
` in that particular area would have a fairly good
`
` understanding of the nature of the hardware inside of
`
` the universal remote control.
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` Q So when you were working on the firmware, as
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` you just described, did you do any of the actual design
`
` of that firmware or did you manage people that did the
`
` design of it?
`
` A I largely managed people that did the design
`
` of it, although I certainly contributed to some of the
`
` design definitions and some of the algorithms, if you
`
` like.
`
` Q In your various positions at UEI, were you
`
` ever directly responsible for the design of software?
`
` MR. MAIERS: Objection to form.
`
` THE WITNESS: I'm not sure I quite understand
`
` that question, it's very broad.
`
` Design of software as opposed to coding of
`
` software?
`
` BY MR. REYNOLDS:
`
` Q That's a fair clarification. Let me break it
`
` down.
`
` During your time at UEI, did you ever actually
`
` write any software code?
`
` A Not any significant amount, no.
`
` Q Did you manage others that wrote software
`
` code --
`
` A Yes.
`
` Q -- while at UEI?
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` A Yes.
`
` Q Were you involved in setting design parameters
`
` for software while at UEI?
`
` A Yes.
`
` MR. MAIERS: Objection to form.
`
` BY MR. REYNOLDS:
`
` Q And is that something that you did yourself or
`
` you managed others that did it?
`
` A Both. I did that myself and I managed others
`
` who did that.
`
` Q Let me show you what has previously been
`
` marked as Exhibit 2003. That's a copy of the Darbee
`
` '067 patent. For some reason it has got a blank page
`
` at the end. I'm not sure why.
`
` Are you familiar with that patent?
`
` A Yes.
`
` Q You were not a named inventor on that patent,
`
` correct?
`
` A No.
`
` Q How many times have you read the Darbee '067
`
` patent?
`
` A I'd really have to speculate. Probably half a
`
` dozen times over the years.
`
` Q I'm sorry, what was the last part?
`
` A I said, "over the years."
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` Q Oh.
`
` When was the last such time that you read the
`
` patent?
`
` A In connection with preparing my declaration, I
`
` reviewed the patent. I can't say that I read every
`
` word of it, because I'm quite -- I was quite familiar
`
` with it by this time, but I certainly did read the
`
` significant parts of it.
`
` Q Why were you already quite familiar with it?
`
` A Because it was a key part of Universal
`
` Electronics' intellectual property portfolio, it had
`
` been the subject of various other legal actions, I
`
` believe, it was part of the current lawsuit against
`
` URC, I believe it had been -- possibly been licensed --
`
` I don't recall specifically whether it was licensed,
`
` but I had certainly -- I was very familiar with it.
`
` Q Were you involved in licensing activities
`
` while you were at UEI?
`
` A Yes.
`
` Q What was your involvement in those activities?
`
` A I would participate in the license
`
` negotiations with parties who wished to license UEI's
`
` intellectual property.
`
` Q So you don't recall the Darbee '067 patent
`
` being involved in any of those licensing negotiations
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` that you participated in?
`
` MR. MAIERS: Objection to form.
`
` THE WITNESS: I participated in several
`
` licensing negotiations, and I can't recall with any
`
` specificity which patents were in what set of
`
` negotiations. I'd need to see the license agreements
`
` to refresh my memory on that.
`
` BY MR. REYNOLDS:
`
` Q So I asked about negotiations, but does that
`
` mean that you are also not aware of any licenses
`
` specifically granted to the Darbee '067 patent?
`
` MR. MAIERS: Same objection.
`
` THE WITNESS: I can't say if they are or not,
`
` I would need to look at the various license agreements.
`
` BY MR. REYNOLDS:
`
` Q Have you read the file history for the Darbee
`
` '067 patent?
`
` A Parts of it, yes.
`
` Q I think you indicated before that you had read
`
` some parts related to the reexamination of that patent.
`
` Are there other parts that you recall reading?
`
` A I think from time to time over the years I've
`
` referenced it on several occasions. I think I looked
`
` at it -- parts of it again in connection with this
`
` declaration, as I testified earlier, I think.
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` Q Do you recall which parts specifically that
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` you looked at?
`
` A I know I looked at the claim.
`
` I think I looked at some parts that are
`
` referenced in the reexamination or in the -- in the
`
` appeals board decision, but I would have to look at
`
` that to see exactly which pieces were referenced in
`
` there.
`
` I know I looked at Figure 11, I believe that
`
` was referenced in the appeals board decision.
`
` Q Just so we're clear, my question was directed
`
` to what parts of the file history you recall --
`
` A Oh --
`
` Q -- reviewing.
`
` A -- I'm sorry. I think I looked at the reasons
`
` for allowance, I know I have at some point in the past,
`
` I can't remember if that was specifically this time or
`
` not.
`
` Q I would like to direct your attention to
`
` paragraph 12 of your declaration.
`
` So in connection with this matter, you read
`
` Dr. Herr's declaration; is that correct?
`
` A That's correct.
`
` Q Did you also read the transcript of his
`
` deposition?
`
`Veritext National
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