IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
` Universal Remote Control, Inc.
`
` v.
`
` Universal Electronics, Inc.
`
` Case No. IPR2013-00127
`
` Trial Paralegal: Andrew Kellogg
`
`
`
`In re Application of: Darbee et al.
`
`Patent No.: 6,587,067
`
`Filed: February 23, 2001
`
`Issued: July 1, 2003
`
`Assignee: Universal Electronics, Inc.
`
`Title: METHOD FOR SELECTING A
`REMOTE CONTROL
`COMMAND SET
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
` Universal Remote Control, Inc.
`
` v.
`
` Universal Electronics, Inc.
`
` Case No. IPR2013-00127
`
` Trial Paralegal: Andrew Kellogg
`
`
`
`In re Application of: Darbee et al.
`
`Patent No.: 6,587,067
`
`Filed: February 23, 2001
`
`Issued: July 1, 2003
`
`Assignee: Universal Electronics, Inc.
`
`Title: METHOD FOR SELECTING A
`REMOTE CONTROL
`COMMAND SET
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
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`TABLE OF CONTENTS
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`
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`PATENT OWNER HAS NOT PROVED A DATE OF INVENTION
`EARLIER THAN THE PRIOR ART REFERENCES.............................. 1(cid:3)
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`A.(cid:3) Patent Owner Has Offered No Independent Proof Beyond The Co-
`inventor’s Testimony To Corroborate Reduction To Practice ........ 1(cid:3)
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`B.(cid:3) The Earliest Invention Date That Patent Owner Could Possibly Be
`Entitled To Is April 30, 1987 ............................................................... 6
`
`I.(cid:3)
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`
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`II.(cid:3)
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`PATENT OWNER’S ATTACKS ON THE PRIOR ART FAIL .............. 7(cid:3)
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`A.(cid:3) Magnavox .............................................................................................. 7(cid:3)
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`B.(cid:3) Evans .................................................................................................... 12(cid:3)
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`C.(cid:3) Wozniak and CORE ........................................................................... 13(cid:3)
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`(cid:3)- i -
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`Petitioner’s Reply to Patent Owner’s Response
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`
`
`TABLE OF AUTHORITIES
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`
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`Cooper v. Goldfarb, 154 F.3d 1321, 47 U.S.P.Q.2d 1896 (Fed. Cir. 1998) ......... 2, 4
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`Reese v. Hurst, 661 F.2d 1222, 211 U.S.P.Q 936 (CCPA 1981) .............................. 2
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`Hahn v. Wong, 892 F.2d 1028, 13 U.S.P.Q.2d 1313 (Fed. Cir. 1989) ...................... 3
`
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`In re Garner, 508 F.3d 1376, 85 U.S.P.Q.2d 1310 (Fed. Cir. 2007) ......................... 3
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`Mahurkar v. C.R. Bard Inc., 79 F.3d 1572, 38 U.S.P.Q.2d 1288 (Fed. Cir. 1996) ... 4
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`Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356
`(Fed. Cir. 2006) .......................................................................................................... 9
`
`
`
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`(cid:3)- ii -
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`Petitioner’s Reply to Patent Owner’s Response
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`I.
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`PATENT OWNER HAS NOT PROVED A DATE OF INVENTION
`EARLIER THAN THE PRIOR ART REFERENCES
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`Patent Owner spends the vast majority of its Response not in attacking the
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`merits of Petitioner’s prior art references (for good reason), but rather in trying to
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`convince the Board that the references do not qualify as prior art. Although the
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`supporting declaration of Richard Ellis (one of the co-inventors of the ‘067 patent)
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`makes passing reference to conception of the invention at some unspecified time in
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`1986, there is no corroborating evidence to support such conception, and neither he
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`nor Patent Owner has made any attempt to show diligence from such conception to
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`a later reduction to practice. Accordingly, Patent Owner’s attempt to antedate
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`Magnavox, Evans, Wozniak and CORE1 is based entirely on proving a reduction to
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`practice date that predates those references. As shown below, Patent Owner has
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`failed to prove such earlier reduction to practice.
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`A. Patent Owner Has Offered No Independent Proof Beyond The Co-
`inventor’s Testimony To Corroborate Reduction To Practice
`
`
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`In its Preliminary Response, Patent Owner attempted to remove the
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`Magnavox, Evans, Wozniak and CORE references by referring to a Rule 131
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`declaration filed by co-inventor Darbee in connection with the prosecution of the
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`great, great grandparent application to the ‘067 patent. In its Decision, the Board
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`correctly refused to allow the use of the Darbee declaration in this inter partes
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`1 Patent Owner is not attempting to antedate the Rumbolt reference.
`1
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`Petitioner’s Reply to Patent Owner’s Response
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`review proceeding. Nevertheless, the Board did examine the materials submitted
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`with the Darbee declaration and found they were insufficient to show either
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`conception, reduction to practice or diligence. Specifically, the Board found that
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`the user manuals were not evidence of a prior reduction to practice and that
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`“Neither the Darbee Declaration nor the Preliminary Response points to any
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`evidence and alleges that a universal remote control corresponding to the claimed
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`invention(s) of the ‘067 patent was tested and determined to work as intended.”
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`(Decision at 11)
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`
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`In an effort to cure the deficiencies in its reduction to practice proof, Patent
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`Owner has submitted a new declaration of co-inventor Ellis (Ex. 2005), attaching
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`all of the same documents originally included with the Darbee declaration along
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`with some additional ones. However, neither the Ellis declaration nor the new
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`supporting materials establish that the invention was reduced to practice prior to
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`Magnavox, Evans, Wozniak or CORE.
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`
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`In order to establish an actual reduction to practice, an inventor's testimony
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`must be corroborated by independent evidence. Cooper v. Goldfarb, 154 F.3d
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`1321, 1330 (Fed. Cir. 1998). A rule of reason analysis is applied to determine
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`whether an inventor’s testimony has been sufficiently corroborated. Id.
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`"[A]doption of the 'rule of reason' has not altered the requirement that evidence of
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`corroboration must not depend solely on the inventor himself." Reese v. Hurst,
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`2
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`Petitioner’s Reply to Patent Owner’s Response
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`661 F.2d 1222, 1225 (CCPA 1981); see also, Hahn v. Wong, 892 F.2d 1028, 1032
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`(Fed. Cir. 1989). “Independent corroboration may consist of testimony of a
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`witness, other than of the inventor, to the actual reduction to practice or it may
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`consist of evidence of surrounding facts and circumstances independent of
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`information received from the inventor.” In re Garner, 508 F.3d 1376, 1380 (Fed.
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`Cir. 2007) (quoting Reese v. Hurst, 661 F.2d at 1225). Furthermore, corroboration
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`of the existence of the device itself is not sufficient to establish reduction to
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`practice. It is also necessary to corroborate that the device worked for its intended
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`purpose. Id. at 1381.
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`
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`The only evidence that Patent Owner has offered to establish reduction to
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`practice is the declaration of co-inventor Ellis and the attached exhibits. But, at
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`most, all that those exhibits establish is that a remote control of some sort existed
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`at various times throughout 1987. In his declaration, Mr. Ellis talks about no less
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`than three different prototypes of the universal remote control: (1) a first prototype
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`built sometime in the fall of 1986 (¶ 15), (2) a development prototype built
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`sometime in the winter of 1986-87 (¶ 16), and (3) a pre-production model built
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`sometime in March/April of 1987 (¶ 30). However, he provides no details of what
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`the differences were between the various prototypes or whether those prototypes
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`even incorporated the various features of the claims of the ‘067 patent. Instead, in
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`each instance he merely summarily concludes that the respective prototypes were
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`3
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`Petitioner’s Reply to Patent Owner’s Response
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`found to be working and suitable for their intended purpose (without specifying the
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`intended purpose or providing any documentation to substantiate his claim).
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`Significantly, when asked about the two “key features” of the ‘067 patent –
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`the capability for direct entry matching of a universal remote control to a plurality
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`of different home appliances of different manufacturers and the capability for
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`assigning a command macro to a macro pushbutton (¶ 7) – Mr. Ellis testified:
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`
`
`
`
`
`
`
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`Q. When was the first time that the direct entry method was incorporated
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`into an actual working prototype?
`
`A.
`
`It had to be early on, but I don’t have a specific date.
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`Q. And when was the assigning a command macro to a macro pushbutton
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`first incorporated into a working prototype?
`
`A. Again, I don’t know for sure. (Ex. 1015 at 58:22-59:5)2
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`Another reason that Patent Owner’s attempt at establishing a reduction to
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`practice date must fail is that it has provided no evidence regarding any testing that
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`was done on the various prototypes. Depending on the character of the invention
`
`and the problem it solves, determining that an invention will work for its intended
`
`purpose may require testing. When testing is necessary, the embodiment relied
`
`upon as evidence of priority must actually work for its intended purpose. Cooper
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`v. Goldfarb, 154 F.3d at 1327 (citing Mahurkar v. C.R. Bard Inc., 79 F.3d 1572,
`
`1578 (Fed. Cir. 1996)). However, in Mr. Ellis’ 17-page declaration there are only
`
`
`2 Although Patent Owner originally designated the Ellis’ deposition transcript as
`“Attorneys Eyes Only,” it has since withdrawn that designation.
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`4
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`Petitioner’s Reply to Patent Owner’s Response
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`three sentences devoted to the subject of testing (¶¶ 15, 16 and 30). None of those
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`sentences describes anything at all about the testing process, when it occurred,
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`what the outcome was, etc. Instead, each merely concludes that the testing showed
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`that the device worked for its intended purpose. No independent corroborating
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`evidence of any kind (documentary or testimonial) is attached to substantiate these
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`bald assertions.
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`
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`When asked about the subject of testing, Mr. Ellis could not recall any
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`details. For example, with respect to exactly what was done to test the first
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`prototype described in ¶ 15 of his declaration, Mr. Ellis stated “I can’t get real
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`specific, but we pointed it at TVs, made it turn – and VCRs, and, you know, did
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`direct entry and step and set and made it controlled with devices.” (Ex. 1015 at
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`81:25-82:9) When asked about testing of the assigning of macro commands to a
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`macro pushbutton (the other “key” feature of the claims), Mr. Ellis stated:
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`
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`A.
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`I don’t recall specific testing of it. I did testing of it when I wrote the
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`code. But that code came a little later than the direct entry.
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`Q. Do you know how much later?
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`A. Not specifically, no. (Ex. 1015 at 82:24-83:11)
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`Similarly, when asked about any specific problems he recalled with the pre-
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`production prototypes, Mr. Ellis referred to “[j]ust the typical debugging process”
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`without providing any explanation as to what features needed to be debugged or
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`how long the process took. With respect to the production model of the remote,
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`5
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`Petitioner’s Reply to Patent Owner’s Response
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`however, he did recall a “big” software bug in late 1987 that required the reloading
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`of 5,000 units. (Ex. 1015 at 125:25-126:15)
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`To summarize, the mere fact that pictures, schematics and PCB layouts
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`existed for various prototypes of the universal remote control does not thereby
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`establish that those devices actually embodied the features of the ‘067 patent
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`claims or that they worked for their intended purpose. Mr. Ellis testified that he
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`does not know when the key patented features made their way into the prototypes
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`and Patent Owner has offered absolutely no independent corroboration for Mr.
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`Ellis’ conclusory statements that the various prototypes were tested and worked for
`
`their intended purpose. This showing is legally insufficient to establish any actual
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`reduction to practice date for the alleged invention of the ‘067 patent.
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`B. The Earliest Invention Date That Patent Owner Could Possibly Be
`Entitled To Is April 30, 1987
`
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`As set forth above, Patent Owner’s attempt to antedate the prior art
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`references must fail because its only evidence that the invention was tested and
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`working for its intended purpose is the vague, conclusory, uncorroborated
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`testimony of one of the co-inventors. This is legally insufficient. However, if the
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`Board were to decide otherwise, then the earliest possible date of invention to
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`which Patent Owner should be entitled is April 30, 1987. That date would remove
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`Evans, Wozniak and CORE as references, but not Magnavox (which bears a date
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`of April 9, 1987). Accordingly, at the very least, the finding of unpatentability of
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`6
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`Petitioner’s Reply to Patent Owner’s Response
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`claims 1, 3, 4 and 6 on the basis of Rumbolt and Magnavox should stand.
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`April 30, 1987 is the date of the software source code attached as Exhibit L
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`to the Ellis declaration. Software was a critical part of the ‘067 patented universal
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`remote control. Indeed, Mr. Ellis – the author of the source code – testified that
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`without the source code of Exhibit L “the thing would do nothing, including those
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`functions” (referring to the features of the patent claims as paraphrased in ¶¶ 10-12
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`of his declaration). (Ex. 1015 at 69:12-13)
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`Mr. Ellis further testified that there were “a lot” of different software
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`prototypes of the invention and that during active development of the invention he
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`was loading new code “several times a day.” When asked how long the active
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`development period lasted, Mr. Ellis said it was “fuzzy” and “doesn’t have fixed
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`starts and stops in it.” (Ex. 1015 at 74:23-76:16) Thus, the only thing that is
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`known for sure about the software that provided all of the critical functionality
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`(including the claimed direct entry and macro command functions) is that a version
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`of it existed as of April 30, 1987. No other prior software versions have been
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`provided and thus no reduction to practice earlier than that date can be supported.
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`II. PATENT OWNER’S ATTACKS ON THE PRIOR ART FAIL
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`A. Magnavox
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`
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`In its Response, Patent Owner seeks to antedate Magnavox as a reference.
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`For the reasons set forth above, Patent Owner cannot antedate Magnavox. With
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`7
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`Petitioner’s Reply to Patent Owner’s Response
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`respect to the merits of the Rumbolt/Magnavox combination, Patent Owner makes
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`two arguments: (1) Magnavox is ambiguous as to how codes are entered into the
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`remote control, and (2) it would not have been obvious to one of ordinary skill in
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`the art to replace the DIP switches of Rumbolt with the pushbutton code entry of
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`Magnavox. Neither argument has merit.
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`Magnavox clearly and unambiguously describes a 36-button universal
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`remote control in which a user matches the remote control to a particular VCR
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`and/or cable brand by entering the appropriate numerical code such as 01 for GE,
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`03 for RCA, 15 for Zenith, etc. However, Patent Owner argues that Magnavox
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`never explicitly states that the pushbuttons are used to enter the numerical codes
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`and that DIP switches or rotary switches could just as easily have been used for
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`this function. This argument is specious. Even if it was theoretically possible to
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`use something other than the disclosed pushbuttons to enter such codes, as the
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`Board correctly observed in its Decision, there is no mention in Magnavox of “DIP
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`switches, or any other means by which a user may enter the numeric codes into the
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`universal remote, other than by using pushbuttons of the ‘36-button’ Universal
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`Remote.” (Decision at 15)3
`
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`3 Patent Owner’s alternate argument is that the source of the Magnavox press
`release (NAP Consumer Electronics Corp.) is the same as the assignee of the
`Rumbolt patent and therefore the Board should infer that the manner of code entry
`in Magnavox is the same as in Rumbolt (i.e., DIP switches). There is clearly no
`basis in law or fact for the Board to draw such an inference.
`
`8
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`Petitioner’s Reply to Patent Owner’s Response
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`Patent Owner next argues that replacing the DIP switches of Rumbolt with
`
`the pushbuttons of Magnavox would not have been obvious since such a
`
`modification would have increased the cost of manufacture and required
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`substantial hardware and software changes. These contentions are false.
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`First, as the Federal Circuit has stated, it is appropriate to combine
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`references when “the combination of references results in a product or process that
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`is more desirable, for example because it is stronger, cheaper, cleaner, faster,
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`lighter, smaller, more durable, or more efficient. Because the desire to enhance
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`commercial opportunities by improving a product or process is universal – and
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`even common sensical – we have held that there exists in these situations a
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`motivation to combine prior art references even absent any hint of suggestion in
`
`the references themselves.” Dystar Textilfarben GmbH & Co. Deutschland KG v.
`
`C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006).
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`In this case, there is no question that replacing the DIP switches of Rumbolt
`
`with the pushbuttons of Magnavox would result in a product that is more desirable.
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`User-friendly pushbuttons are ubiquitous in most all modern devices and are much
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`easier to manipulate than tiny DIP switches. In addition, gaining access to DIP
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`switches usually involves removing the cover of the remote control and employing
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`the use of an object such as a pencil to manually manipulate the switches into the
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`desired positions. Also, since DIP switches are binary, many such switches are
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`9
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`Petitioner’s Reply to Patent Owner’s Response
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`required to represent all but the smallest of numbers. A knowledge of binary
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`arithmetic (or an accompanying index that shows which DIP switch configurations
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`correspond to various numbers/functions) is also required.
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`Second, Patent Owner asserts that in the mid-1980s the use of DIP switches
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`was much more common than RAM (typically used with pushbutton devices) since
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`DIP switches allowed for the preservation of the stored identities of appliances
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`when the batteries were removed from the remote to allow them to be replaced.
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`This assertion is belied by the prior art references themselves. For example, both
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`Evans and Wozniak depict RAM memories for storing device codes (see 112 of
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`Fig. 3C of Evans and U2 of Fig. 7b of Wozniak).
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`Third, Patent Owner provides no credible evidence for the assertion that the
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`use of RAM (associated with the use of pushbutton devices) would have been more
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`expensive than the use of DIP switches. The only basis for such assertion is the
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`declaration of Patrick Hayes. Mr. Hayes is not an independent expert. In fact, he
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`is a former employee of Patent Owner UEI who was not even employed by UEI
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`during the applicable period (i.e., mid-1980s). Mr. Hayes joined UEI in 1992 and
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`prior to that had virtually no experience in the design or manufacture of remote
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`controls. (Ex. 1016 at 13:11-16:6) Further, Mr. Hayes testified that he did not
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`know the respective costs of DIP switches, RAM or ROM as of 1987. (Ex. 1016 at
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`61:8-24) On the other hand, Petitioner’s independent expert, Dr. Herr, has
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`10
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`Petitioner’s Reply to Patent Owner’s Response
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`extensive experience in the design of remote controls (including during the
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`relevant time frame) and testified at great length about the construction and cost of
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`DIP switches and concluded that “every engineer, product manager, accountant,
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`would be pushing me to cost reduce this. And they would not use DIP switches.
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`They would use the switches already existing for selecting the channels.” (Ex.
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`2007 at 65:18-21)
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`Finally, Mr. Hayes’ assertion that replacing the DIP switches of Rumbolt
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`with the pushbuttons of Magnavox would have required a “substantial” amount of
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`new software is totally unsupported. As previously noted, Mr. Hayes had no
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`experience with consumer remote controls prior to joining UEI in 1992 and even
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`while there did not personally write any software. (Ex. 1016 at 22:19-21)
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`Therefore, he is in no position to opine as to the level of software modifications
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`necessary in order to change from DIP switches to pushbuttons. Indeed, Mr.
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`Hayes provides absolutely no details about what software changes would be
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`needed, how long they would take to implement, etc. He offers nothing more than
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`a conclusory statement that the changes would be “substantial.” Dr. Herr, on the
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`other hand, testified in detail about the required relatively simple software
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`modifications:
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`Q.
`
`-- nonvolatile read/write memory, would any additional programming
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`be necessary in order to convert the remote of Rumbolt which used DIP
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`switches to one that was matched via push buttons?
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`11
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`Petitioner’s Reply to Patent Owner’s Response
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`A.
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`If they use a PIC microprocessor, it would be 10 or 12 instructions,
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`it’s insignificant.
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`Q. Okay. What would those instructions involve?
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`A. Addressing – sending an address to the nonvolatile memory and
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`bringing back the data that it – so there’d be four bits to select the address,
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`one to execute the write command – I mean, the read or write command, and
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`then if it’s coming back to read it out, two more instructions to read it.
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`Q. Wouldn’t you require additional programming to make the remote
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`aware of the fact that its buttons are now multi-function?
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`A.
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`It would take additional programming, probably equal to the
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`programming of when you started it up or every time you use it, going out to
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`read the switches. It wouldn’t be a significant difference. It would take
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`additional programming, but we’re talking a few instructions, probably less
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`than half an hour or maybe an hour’s of engineering time. (Ex. 2007 at
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`72:14-73:11)
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`B. Evans
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`In its Response, Patent Owner seeks to antedate Evans as a reference. For
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`the reasons set forth above, Patent Owner cannot antedate Evans. With respect to
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`the Rumbolt/Magnavox/Evans combination, Patent Owner’s arguments as to the
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`merits of Rumbolt and Magnavox have been addressed above. Patent Owner’s
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`sole argument regarding Evans itself is that it does not disclose a “library of codes
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`and data” because Evans describes a “learning” remote that must be taught the
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`codes and data necessary to operate a particular appliance. But, as the Board has
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`already correctly found, this distinction is irrelevant. There is no requirement in
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`12
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`Petitioner’s Reply to Patent Owner’s Response
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`the claims that the library of codes and data be pre-programmed into the remote or
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`that they be “already stored in memory at the time of manufacture” as Patent
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`Owner urges. Patent Owner seeks to do an end run on the claim language by
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`asking the Board to construe “a library of codes and data” as “a table programmed
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`into the remote control, the table comprising a variety of command codes
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`corresponding to particular appliances of different manufacturers.” (Response at
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`15) There is no basis for the Board to read such a limitation from the specification
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`into the claims.
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`Putting aside the red herring issue of Evans having a library of codes and
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`data that is “learned” as opposed to pre-stored, Patent Owner does not dispute that
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`Evans in fact discloses storing infrared codes and data in RAM 112 which are then
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`retrieved and the proper infrared signals generated when the macro function is
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`selected by operation of keys on the universal remote just as the claims require.
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`C. Wozniak and CORE
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`In its Response, Patent Owner seeks to antedate both Wozniak and CORE as
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`references. For the reasons set forth above, Patent Owner cannot antedate either
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`one. With respect to the merits of Wozniak and CORE, Patent Owner’s main
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`argument is essentially a rehash of the argument made with respect to Evans:
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`namely, that Wozniak and CORE allegedly disclose only a “learning” remote and
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`therefore do not include a “library of codes and data” and also cannot “directly
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`13
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`Petitioner’s Reply to Patent Owner’s Response
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`identify” a plurality of different appliances to which the remote control is to be
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`matched. Patent Owner’s characterization of Wozniak/CORE is both factually
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`incorrect and legally irrelevant.
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`Patent Owner begins its argument by claiming that Dr. Herr conceded that
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`Wozniak/CORE cannot be matched to a particular appliance based on codes
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`entered via pushbuttons. Dr. Herr said no such thing. His answers pertained to the
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`process by which the manufacturers’ codes were stored into the remote initially. In
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`particular, in an excerpt from the deposition not quoted in the Response, Dr. Herr
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`stated that he was referring to page 9 of the CORE reference manual (which Patent
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`Owner’s counsel clarified actually corresponds to Bates numbered page 10 on Ex.
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`1005). (Ex. 2007 at 82:13-83:12) That page describes how the remote “learns”
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`infrared commands by aligning the CORE remote with the appliance remote.
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`However, upon redirect examination, Dr. Herr clarified that the CORE manual also
`
`describes (on the preceding Bates numbered page 9) that the remote does not have
`
`to rely solely on learning infrared codes but also comes preprogrammed with codes
`
`of certain manufacturers. (Ex. 2007 at 85:1-86:25) Thus, Dr. Herr’s testimony
`
`that pushbuttons are not used to directly enter codes when the remote is in learning
`
`mode is correct. But – just as with the Evans reference – how the codes find their
`
`way into the remote initially is ultimately irrelevant for purposes of the claims of
`
`the ‘067 patent. It is how the stored codes are matched with appliances of different
`
`14
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`manufacturers that matters.4
`
`Lastly, Patent Owner once again makes the argument previously rejected by
`
`the Board that the fact that the CORE remote uses a page structure to store the
`
`commands of various manufacturers somehow means that the remote cannot
`
`“directly identify” the device to be controlled via pushbuttons. This is plainly
`
`incorrect. The CORE manual explains in detail that in order to access a particular
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`device command (such as one associated with a Sony TV, for example) the user
`
`merely presses the Page key followed by the number of the page that contains the
`
`desired TV command. Once the selected page is accessed the user then presses the
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`key corresponding to the desired TV command (such as power on, for example).
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`By performing such a sequence of pushbutton operations, the user clearly has
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`matched the remote to the Sony TV and has directly identified the power on
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`function of the TV just as required by the ‘067 patent claims. (Ex. 1005 at 8-9)
`
`
`
`
`Digitally signed by Tom Reynolds
`
`Tom Reynolds
`DN: cn=Tom Reynolds, o=SLW, ou,
`
`email=treynolds@slwip.com, c=US
`Date: 2014.01.09 13:49:51 -08'00'
`Date: January 9, 2014 _____________________________________
`
`
`
`
`Tom Reynolds, Reg. No. 32,488
`
`
`
`
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`
`4 Patent Owner also misleadingly implies that Judge Guilford construed “directly
`identify” to refer to device-specific codes being preprogrammed into the remote
`control. Judge Giulford made no mention of preprogramming in his claim
`construction. (See Ex. 2001 at 34) Furthermore, even if he had, it would not
`matter since the CORE remote came preprogrammed with various device codes.
`
`15
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`
`
`Amended Petition for Inter Partes Review of
`U.S. Patent No. 6,587,067
`Trial No. IPR2013-00127
`
`
`
`CERTIFICATE OF SERVICE
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`U.S. Patent No.:
`
`Patent Issue Date:
`
`Patent Filing Date:
`
`Primary Examiner:
`
`Title:
`
`
`
`
`
`
`
`
`
`
`6,587,067
`
`July 1, 2003
`
`February 23, 2001
`
`Michael Horabik
`
`UNIVERSAL REMOTE CONTROL WITH MACRO
`COMMAND CAPABILITIES
`
`
`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 PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`Dear Sir/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
`
`electronic mail on the counsel of record for United States Patent No. 6,587,067
`
`(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:
`
`
`
`
`
`Amended Petition for Inter Partes Review of
`U.S. Patent No. 6,587,067
`Trial No. IPR2013-00127
`
`
`Michael A. Nicodema
`200 Park Ave.
`P.O. Box 677
`Florham Park, NJ 07932-0677
`
`Gary R. Jarosik
`Eric J. Maiers
`77 West Wacker Dr.
`Suite 3100
`Chicago, IL 60601
`
`Via the following email addresses provided by Patent Owner’s Representatives:
`jarosikg@gtlaw.com; maierse@gtlaw.com; and chiipmail@gtlaw.com
`
`1.
`2.
`3.
`4.
`
`Petitioner’s Reply to Patent Owner’s Response
`Exhibit 1015 – Deposition of Richard Ellis
`Exhibit 1016 – Deposition of Patrick H. Hayes
`This Certificate of Service
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`Respectfully submitted,
`
`____________________________________________
`________________________________
`Chris Bartl, Paralegal
`Chris Bartl, Paralegal
`SCHWEGMAN LUNDBERG
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`1600 TCF Tower
`121 South Eighth Street
`Minneapolis, Minnesota 55402
`612-373-6900
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`DATED: January 9, 2014
`
`
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`
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