`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Petition for Inter Partes Review
`under 35 U.S.C. §§ 311–319
`and 37 C.F.R. § 42.100 et seq.
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`
`
`
`
`In re Application of: Darbee et al.
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`Patent No.: 6,587,067
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`Filed: February 23, 2001
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`Issued: July 1, 2003
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`Assignee: Universal Electronics, Inc.
`
`Title: METHOD FOR SELECTING A
`REMOTE CONTROL
`COMMAND SET
`
`
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`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,587,067
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................ i(cid:3)
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`EXHIBIT LIST ...................................................................................................... iv(cid:3)
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`I.(cid:3) MANDATORY NOTICES ........................................................................... 1(cid:3)
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`A.(cid:3) Real Party-In-Interest .......................................................................... 1(cid:3)
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`B.(cid:3) Related Matters ..................................................................................... 1(cid:3)
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`C.(cid:3) Lead and Back-Up Counsel ................................................................. 2(cid:3)
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`D.(cid:3)
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`Service Information .............................................................................. 2(cid:3)
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`II.(cid:3)
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`PAYMENT OF FEES ................................................................................... 2(cid:3)
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`III.(cid:3) REQUIREMENTS FOR INTER PARTES REVIEW............................... 3(cid:3)
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`A.(cid:3) Grounds For Standing ......................................................................... 3(cid:3)
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`B.(cid:3)
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`Identification of Challenge ................................................................... 3(cid:3)
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`1.(cid:3) Claims for which inter partes review is requested ........................... 3(cid:3)
`2.(cid:3) The specific art and statutory ground(s) on which the challenge is
`based ................................................................................................. 4(cid:3)
`3.(cid:3) How the challenged claims are to be construed ............................... 6(cid:3)
`4.(cid:3) How the construed claims are unpatentable under the statutory
`grounds identified in 37 C.F.R. § 42.104(b)(2). .............................. 7(cid:3)
`5.(cid:3) Supporting evidence relied upon to support the challenge .............. 7(cid:3)
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`IV.(cid:3) SUMMARY OF THE '067 PATENT .......................................................... 8(cid:3)
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`C.(cid:3)
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`Summary of the Prosecution History ................................................. 9(cid:3)
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`1.(cid:3) Prosecution and Issuance of the ’067 patent .................................... 9(cid:3)
`2.(cid:3) Reexamination Serial No. 90/007,876 ........................................... 11(cid:3)
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`V.(cid:3) DETAILED CLAIM CONSTRUCTION .................................................. 12(cid:3)
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`VI.(cid:3) THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
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`CLAIM OF THE '067 PATENT IS UNPATENTABLE.................................... 12(cid:3)
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`A.(cid:3) Claims 1-6 are Unpatentable in view of Rumbolt and Magnavox . 12(cid:3)
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`B.(cid:3) Claims 1, 2, 4, and 5 are Unpatentable in view of Rumbolt,
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`Magnavox, and Evans ........................................................................ 14(cid:3)
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`C.(cid:3) Claims 1-6 are Unpatentable in view of Wozniak and CORE ....... 15(cid:3)
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`D.(cid:3) Claims 1-6 are Unpatentable in view of U.S. Patent No. 4,703,359
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`and CORE ........................................................................................... 16(cid:3)
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`VII.(cid:3) DETAILED EXPLANATION OF HOW THE CHALLENGED
`
`CLAIMS ARE UNPATENTABLE ...................................................................... 16(cid:3)
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`A.(cid:3) Description of the Prior Art ............................................................... 17(cid:3)
`
`1.(cid:3) Rumbolt, U.S. Patent No. 4,774,511 (Ex. 1002) ............................ 17(cid:3)
`2.(cid:3) Wozniak, U.S. Patent No. 4,918,439 (Ex. 1003) ........................... 17(cid:3)
`3.(cid:3) Evans, U.S. Patent No. 4,825,200 (Ex. 1004) ................................ 18(cid:3)
`4.(cid:3) CORE Reference Manual (Ex. 1005) ............................................. 19(cid:3)
`5.(cid:3) Magnavox, PR Newswire Press Release (Ex. 1006) ...................... 20(cid:3)
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`B.(cid:3) Detailed Grounds for Unpatentability Arguments ......................... 20(cid:3)
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`1.(cid:3) Ground 1: Claims 1–6 are Rendered Obvious by Rumbolt in view
`of Magnavox Under 35 U.S.C. § 103 ............................................ 20(cid:3)
`2.(cid:3) Ground 2: Claims 1, 2, 4, and 5 are Rendered Obvious by Rumbolt
`in view of Magnavox in further view of Evans Under 35 U.S.C. §
`103 .................................................................................................. 32(cid:3)
`3.(cid:3) Ground 3: Claims 1–6 are Rendered Obvious by Wozniak in view
`of CORE Under 35 U.S.C. § 103 ................................................... 38(cid:3)
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`4.(cid:3) Ground 4: Claims 1-6 are Rendered Obvious by U.S. Patent No.
`4,703,359 in view of CORE Under 35 U.S.C. § 103 ..................... 50(cid:3)
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`VIII.(cid:3) CONCLUSION ............................................................................................ 54(cid:3)
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`IX.(cid:3) CERTIFICATE OF SERVICE .................................................................. 55(cid:3)
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`(cid:3)
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`EXHIBIT LIST
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`1001. U.S. Patent No. 6,587,067 to Darbee et al. (“the '067 patent”)
`
`1002. U.S. Patent No. 4,774,511 to Rumbolt et al. (“Rumbolt”)
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`1003. U.S. Patent No. 4,918,439 to Wozniak et al. (“Wozniak”)
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`1004. U.S. Patent No. 4,825,200 to Evans et al. (“Evans”)
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`1005. Ron Karr, Robert Retzlaff, Tom Johnson, Chuck Van Dusen, and Meg
`Beeler, “CORE Reference Manual,” 1987, pp. i-91. (“CORE”)
`
`
`1006. PR Newswire (April 9, 1987), Magnavox unveils Total Remote Tuning
`System and second generation Universal Remote Control. [Press Release],
`NAP Consumer Electronics Corp., Retrieved from DIALOG (“Magnavox”)
`
`
`1007. Whither Woz?, Fortune, September 28, 1987, at 123.
`
`1008. File History for Application Serial No. 09/791,354 which is now U.S. Patent
`No. 6,587,067 to Darbee et al.
`
`
`1009. File History for Ex Parte Reexamination of U.S. Patent No. 6,587,067,
`Application Serial No. 90/007,876.
`
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`1010. Declaration of Alan J. Herr, Ph.D (“Herr Declaration”).
`
`1011. U.S. Patent No. 4,703,359 to Rumbolt et al. (“Rumbolt '359”)
`
`1012. Business Wire (January 9, 1987), CL9 : CL9 announces availability of first
`truly programmable master controller: Apple Computer cofounder Wozniak
`unveils CORE. [Press Release], Business Editors, Retrieved from DIALOG
`(“CL9”)
`
`
`1013. U.S. Patent No. 4,623,887 to Welles
`
`1014. U.S. Patent No. 4,626,848 to Ehlers
`
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`(cid:3)- iv -
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`Petitioner Universal Remote Control, Inc. (“URC” or “Petitioner”)
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`respectfully requests inter partes review of claims 1-6 of U.S. Patent No.
`
`6,587,067 (the “'067 patent,” attached as Ex. 1001) in accordance with 35 U.S.C.
`
`§§ 311–319 and 37 C.F.R. § 42.100 et seq.
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`I. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), URC provides the following mandatory
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`disclosures.
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`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that URC is the real
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`party-in-interest.
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`B. Related Matters
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`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that claims 1-3 and 6 of
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`the '067 patent are involved in the litigation styled Universal Electronics Inc., v.
`
`Universal Remote Control, Inc., Case No. SACV 12-00329 AG (JPRx) (C.D. Cal.),
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`filed on March 2, 2012 (the “UEI Litigation”). The UEI Litigation remains
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`pending. The patents-in-suit are U.S. Patent Nos. 5,414,426; 5,568,367; 5,614,906
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`and 6,587,067.
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`This Petition is directed to the ‘067 patent; however, petitions for inter
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`partes review and/or ex parte reexamination corresponding to the remaining
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`patents in the UEI Litigation will also soon be filed. In light of this, the Patent
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`(cid:3)- 1 -
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`Trial & Appeal Board (PTAB) may wish to consolidate one or more of any other
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`inter partes review actions related to this matter to a single panel of Administrative
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`Patent Judges for administrative efficiency.
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`C. Lead and Back-Up Counsel
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`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
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`designation of counsel:
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`Lead Counsel
`
`Back-Up Counsel
`
`Timothy E. Bianchi
`Schwegman, Lundberg & Woessner,
`P.A.
`1600 TCF Tower
`121 South Eighth Street
`Minneapolis, MN 55402
`Tel. (612) 373-6912
`Fax (612) 339-3061
`tbianchi@slwip.com
`USPTO Customer No. 21186
`USPTO Reg. No. 39,610
`
`D. Service Information
`
`Thomas C. Reynolds
`Schwegman, Lundberg & Woessner,
`P.A.
`150 Almaden Blvd.
`Suite 750
`San Jose, CA 95113
`Tel. (408) 278-4058
`Fax (408) 993-0832
`treynolds@slwip.com
`USPTO Customer No. 21186
`USPTO Reg. No. 32,488
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
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`counsel is provided above.
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`II. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge $27,200 to Deposit Account
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`No. 19-0743 as the fee required by 37 C.F.R. § 42.15(a) for this Petition. Review
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`of six claims is being requested, so any excess claims fee is not included in this fee
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`(cid:3)- 2 -
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`calculation. The undersigned further authorizes payment for any additional fees
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`that might be due in connection with this Petition to be charged to the above
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`referenced Deposit Account.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
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`As set forth below, each requirement of 37 C.F.R. § 42.104 for inter partes
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`review of the '067 patent is satisfied.
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`A. Grounds For Standing
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`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the '067
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`patent is available for inter partes review and that the Petitioner is not barred or
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`estopped from petitioning for inter partes review of the '067 patent on the grounds
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`identified herein.
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`B. Identification of Challenge
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`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
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`is that the PTAB cancel as unpatentable claims 1-6 of the '067 patent.
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`1. Claims for which inter partes review is requested
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`Pursuant to 37 C.F.R. § 42.104(b)(1), Petitioner requests inter partes review
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`of claims 1-6 of the '067 patent.
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`(cid:3)- 3 -
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`2. The specific art and statutory ground(s) on which the challenge is
`based
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`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '067 patent
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`is requested in view of the following references, each of which is prior art to the
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`'067 patent under 35 U.S.C. § 102(a) and/or (e):
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`(1) United States Patent No. 4,774,511 to Rumbolt et al. (“Rumbolt”),
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`issued on October 27, 1988 based on an application filed May 30, 1985
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`(Ex. 1002). Accordingly, Rumbolt is prior art to the '067 patent under at
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`least 35 U.S.C. § 102(e).
`
`(2) United States Patent No. 4,918,439 to Wozniak et al. (“Wozniak”),
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`issued on April 17, 1990 based on an application with a priority date of
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`June 23, 1987 (Ex. 1003). Accordingly, Wozniak is prior art to the '067
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`patent under at least 35 U.S.C. § 102(e).
`
`(3) United States Patent No. 4,825,200 to Evans et al. (“Evans”), issued on
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`April 25, 1989 based on an application filed June 25, 1987 (Ex. 1004).
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`Accordingly, Evans is prior art to the '067 patent under at least 35
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`U.S.C. § 102(e).
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`(4) Ron Karr, Robert Retzlaff, Tom Johnson, Chuck Van Dusen, and Meg
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`Beeler, “CORE Reference Manual,” 1987, pp. i-91 (“CORE”), published
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`(cid:3)- 4 -
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`by at least September 1, 1987 (Ex. 1005). Accordingly, CORE is prior
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`art under at least 35 U.S.C. § 102(a).
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`(5) PR Newswire, Magnavox unveils Total Remote Tuning System and
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`second generation Universal Remote Control. [Press Release], NAP
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`Consumer Electronics Corp., Retrieved from DIALOG (“Magnavox”),
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`published April 9, 1987 (Ex. 1006). Accordingly, Magnavox is prior art
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`to the '067 patent under at least 35 U.S.C. § 102(a).
`
`(6) United States Patent No. 4,703,359 to Rumbolt et al. (“Rumbolt '359”),
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`issued on October 27, 1987 based on an application filed November 20,
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`1985 (Ex. 1011). Accordingly, Rumbolt ('359) is prior art to the '067
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`patent under at least 35 U.S.C. § 102(e).
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`While some of the references submitted as part of this Petition were
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`considered, discussed on the record, or applied by the Examiner during original
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`prosecution of the application that matured into the '067 patent, they are asserted
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`here for disclosure of technological teachings not discussed or relied upon by the
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`Examiner. Additionally, some of the references were not substantively considered,
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`discussed on the record, or applied by the Examiner during original prosecution of
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`the application that matured into the '067 patent, and present new, non-cumulative
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`technological teachings. Further, the references submitted in this Petition that were
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`of record in the original prosecution are all being presented in a new light not
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`(cid:3)- 5 -
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`previously considered, such as in a new combination demonstrating the
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`obviousness of the claims of the '067 patent. Moreover, claim amendments prior to
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`issue that purported to recite subject matter indicated to be allowable were
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`defective, rendering the issued claims unpatentable for the reasons set forth in the
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`ex parte prosecution. A detailed discussion of the references and their applicability
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`to claims 1-6 of the '067 patent is provided starting in Section VII(A).
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`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '067 patent
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`is requested on the following grounds.
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`Ground 1. Claims 1-6 are obvious under 35 U.S.C. § 103 over Rumbolt in
`
`view of Magnavox.
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`Ground 2. Claims 1, 2, 4, and 5 are obvious under 35 U.S.C. § 103 over
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`Rumbolt in view of Magnavox, in further view of Evans.
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`Ground 3. Claims 1-6 are obvious under 35 U.S.C. § 103 over Wozniak in
`
`view of CORE.
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`Ground 4. Claims 1-6 are obvious under 35 U.S.C. § 103 over U.S.
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`4,703,359 and CORE as set forth in the Office Action dated January 27, 2003 due
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`to Patent Owner’s failure to properly claim indicated allowable subject matter.
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`3. How the challenged claims are to be construed
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`Pursuant to 37 C.F.R. § 42.104(b)(3), the claims of a patent subject to inter
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`partes review normally receive the “broadest reasonable construction in light of the
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`(cid:3)- 6 -
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`specification of the patent in which [they] appear.” 37 C.F.R. § 42.100(b).
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`However, the '067 patent expired on October 14, 2007, so the claims are not subject
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`to amendment and should be construed pursuant to the principles set forth by the
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`court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed.
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`Cir. 2005) (words of a claim “are generally given their ordinary and customary
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`meaning” as understood by a person of ordinary skill in the art in question at the time
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`of the invention); see also, MPEP 2258(I)(G).
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`4. How the construed claims are unpatentable under the statutory
`grounds identified in 37 C.F.R. § 42.104(b)(2).
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`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how the claims 1-6
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`of the '067 patent are unpatentable under the statutory grounds identified above,
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`including an identification of where each element is found in the prior art patents
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`or printed publications, is provided in Section VII(B), below.
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`5. Supporting evidence relied upon to support the challenge
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`Pursuant to 37 C.F.R. § 42.104(b)(5), the exhibit numbers of the supporting
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`evidence relied upon to support the challenges and the relevance of the evidence to
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`the challenges raised, including identifying specific portions of the evidence that
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`support the challenges, are provided in an exhibit list attached herein. Further
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`supporting evidence, including detailed discussions of the respective prior art
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`references, is provided in the Herr Declaration (Ex. 1010).
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`(cid:3)- 7 -
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`IV. SUMMARY OF THE '067 PATENT
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`The ’067 patent is directed to a universal remote control for transmitting
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`infrared signals to a remote control receiver built into a television or other
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`electrical device, to remotely control the device by turning it on, changing the
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`channel, adjusting the volume, etc. Ex. 1001 at col. 1, ll. 42-48. The invention of
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`the ’067 patent is described as relating to “a method for acquiring the infrared
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`codes” for the electrical device to be controlled and “generating code data related
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`to these infrared codes for storage in a remote control device”. Ex. 1001 at col. 1,
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`ll. 49-52.
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`The ’067 patent explains that the remote control can be used to find code
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`data in a library or table in order to generate “infrared codes for operating different
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`electrical apparatus made by different manufacturers”. This code data is used to
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`generate the appropriate coded infrared signals for operating the controlled
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`electrical device. Ex. 1001 at col. 1, ll. 49-60. Further, the remote control includes
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`the ability to assign to a “macro” pushbutton a subset of the selected codes and
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`data from the library to produce a sequence of operating commands to control one
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`or more of the matched home appliances. See id; see also id. at FIG. 18A, FIG.
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`18B, and at col. 14, ll. 14-22.
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`(cid:3)- 8 -
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`C.
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`Summary of the Prosecution History
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`Application Serial No. 09/791,354 (“the ’354 application”) was filed on
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`February 23, 2001 and issued as U.S. Patent No. 6,587,067 on July 1, 2003. The
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`’354 application was filed with five claims, and claimed benefit of priority under
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`35 U.S.C. § 120 to Application Serial No. 09/109,336 filed on October 14, 1987
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`through a multitude of applications filed between October 14, 1987 and February
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`23, 2001 (including multiple continuation-in-part applications). The term of the
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`’067 patent expired on October 14, 2007.
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`1. Prosecution and Issuance of the ’067 patent
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`A first Office Action addressing claim patentability was mailed on June 26,
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`2002. In that Office Action, the Examiner rejected claims 1-5 under 35 U.S.C. §
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`102(b) as anticipated by the Patent Owner’s own prior U.S. Patent No. 4,959,810.
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`The Examiner also rejected claims 1-5 under 35 U.S.C. § 112, second paragraph,
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`as being indefinite. The Patent Owner conducted an Examiner interview
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`thereafter, during which the Examiner agreed to remove both the § 112 and §
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`102(b) rejections of the pending claims, followed by an Office Action response on
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`July 11, 2002. A Notice of Allowance was mailed on July 31, 2002, allowing
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`claims 1-5.
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`On October 9, 2002, Patent Owner filed a Request for Continued
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`Examination (RCE) in which claims 6-10 were added. Independent claim 6 was
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`(cid:3)- 9 -
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`directed to a method version of the readable medium of claim 1, and claims 7-10
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`were dependent to claim 6. A Non-Final Office Action was mailed on January 27,
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`2003 in response to the RCE. Claims 4 and 9 were indicated as allowable if
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`rewritten in independent form, while claims 1-3, 5-8, and 10 were rejected under
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`35 U.S.C. § 103(a) as being unpatentable over Rumbolt et al. (U.S. Patent No.
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`4,703,359, continuation-in-part of U.S. Patent No. 4,774,511 (Ex. 1002)) in view
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`of the CORE Reference Manual (Ex. 1005, hereinafter “CORE”).
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`
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`In response to the Office Action of January 27, 2003, Patent Owner
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`represented that it amended claims 4 and 9 to incorporate all recitations of the
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`respective parent claims, and canceled claims 3, 5, 8, and 10. Claim 1 was
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`amended to recite “pushbuttons of the keyboard being activated to directly identify
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`each of the plurality of different home appliances to which the universal remote
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`control is to be matched,” and claim 6 was similarly amended. A second Notice of
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`Allowance was thereafter mailed on April 2, 2003. The Notice of Allowance
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`indicated that claims 1-2, 4, 6-7, and 9 were allowed, the prior rejections being
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`withdrawn “because subject matter previously indicated as allowable have been
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`incorporated into the claims.” Ex. 1002, p. 9. A certificate of correction to the
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`issued patent was requested by the Patent Owner on July 29, 2004, and issued
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`shortly thereafter to correct mistakes in issued claims 3, 4, and 6.
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`(cid:3)
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`2. Reexamination Serial No. 90/007,876
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`On January 17, 2006, a request for ex parte reexamination of the ’067 patent
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`was filed, proposing a rejection of issued claims 1-6 based on a prior art reference
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`entitled “Home Run Micromint’s Home Control System Users Manual”
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`(hereinafter “Micromint”), a reference not considered during examination of the
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`original patent. The claims were thereafter rejected under Micromint and the
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`Patent Owner appealed a final rejection of all claims to the Board of Patent
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`Appeals and Interferences (BPAI). The Patent Owner distinguished the claims
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`from the cited reference by arguing that the reference did not disclose a library of
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`codes and data comparable to that recited in the claims of the ’067 patent.
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`On appeal, both the Patent Owner and the Board agreed that because the
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`’067 patent was expired at the time of reexamination, the claims were to be
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`construed pursuant to the principles set forth in Phillips v. AWH Corp., 415 F.3d
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`1303, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). Ultimately, the BPAI reversed the
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`rejections in a decision on September 13, 2010. The BPAI determined that the
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`“codes” recited as part of the library of codes and data in the ’067 patent were
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`distinguishable from the Micromint reference. See Ex. 1008, pp. 14-16, 17-18. A
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`reexamination certificate with no claim amendments issued shortly thereafter.
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`The prior art and arguments directed to the Micromint reference in the ex
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`parte reexamination are fully distinguishable from the grounds of rejection offered
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`(cid:3)
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`herein. Therefore, the same or substantially the same prior art or arguments are not
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`provided by the offered grounds of rejection.
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`V. DETAILED CLAIM CONSTRUCTION
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`Petitioner submits that for purposes of this inter partes review only, pursuant
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`to Phillips v. AWH Corp the claim terms should take on their ordinary and
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`customary meaning as one of ordinary skill in the art would have understood them.
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`Petitioner notes that as of the filing date of this Petition, no Markman hearing has
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`been held in the UEI Litigation and the claim construction in that case is not
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`binding on the PTAB in any event.
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '067 PATENT IS UNPATENTABLE
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`As explained in the preceding sections, the Examiner allowed the claims
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`because of the recitation of “pushbuttons of the keyboard being activated to
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`directly identify each of the plurality of different home appliances to which the
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`universal remote control is to be matched.” Ex. 1008 at p. 9, p. 26. The grounds
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`of invalidity set forth below explain how numerous disclosures in the prior art
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`teach this limitation in the context of all other claim limitations.
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`A. Claims 1-6 are Unpatentable in view of Rumbolt and Magnavox
`
`Rumbolt discloses a universal remote control device with pre-programmed
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`commands for various manufacturers and models of appliances. Ex. 1002 at col. 3,
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`ll. 5-40. Rumbolt also teaches directly identifying each of the plurality of different
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`(cid:3)
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`home appliances to be controlled by the remote control. Ex. 1002 at col. 3, ll. 5-20.
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`Further, Magnavox teaches directly identifying the home appliances to be
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`controlled by the remote control via entering a code via pushbuttons of the
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`keyboard, which addresses the element added to the claims to gain allowance. Ex.
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`1006 at p. 2. Rumbolt’s code entry via switches could have been modified by the
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`teaching of entering a code via pushbuttons from Magnavox. Ex. 1010 at ¶28 A
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`person of ordinary skill in the art would have been motivated to make the proposed
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`combination to improve usability and lower manufacturing costs by removing
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`Rumbolt’s switches. Ex. 1010 at ¶30. Accordingly, in combination, Rumbolt and
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`Magnavox teach all elements recited in claims 1-6 of the '067 patent.
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`Rumbolt and Magnavox were not cited during prosecution of the ‘067 patent
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`and are not cumulative to any of the technical teachings discussed during the
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`prosecution history of the '067 patent.1 In addition, Rumbolt with the obvious
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`modification taught by Magnavox discloses the precise element added by the
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`Patent Owner to gain allowance (e.g., pushbuttons of the keyboard being activated
`
`to directly identify each of the plurality of different home appliances to which the
`
`universal remote control is to be matched). Therefore, there is a reasonable
`
`
`1 A Rumbolt patent (U.S. Patent 4,703,359) was cited during the ‘067 prosecution
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`but it is not the same Rumbolt patent being relied upon in this Rejection.
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`(cid:3)
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`likelihood that at least one of claims 1-6 is unpatentable based on Rumbolt in
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`combination with Magnavox.
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`B. Claims 1, 2, 4, and 5 are Unpatentable in view of Rumbolt,
`Magnavox, and Evans
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`Rumbolt, Magnavox, and Evans, which were not considered in combination or
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`individually discussed during the prosecution of the '067 patent, teach all of the
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`limitations of the claims listed above, and thus demonstrate a reasonable likelihood
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`that at least one of claims 1, 2, 4, and 5 is unpatentable.
`
`As discussed above, Rumbolt in combination with Magnavox teach or
`
`suggest all elements of claims 1, 2, 4, and 5. To further evidence the obviousness
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`of assigning a subset of codes to a macro pushbutton, Evans is introduced to
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`demonstrate the state of the art with regard to programmable (e.g., macro) keys
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`within universal remote controls. Ex. 1010 at ¶32. Specifically, Evans teaches
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`program keys (e.g., a macro key) that can be configured to cause a predetermined
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`sequence of steps to be performed. Ex. 1004 at col. 8, ll. 17-22. A person of
`
`ordinary skill in the art would have understood that Rumbolt’s command chaining
`
`teachings could be further enhanced by Evans’ program keys to provide a more
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`flexible macro key capability, such as assigning a series of commands to any
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`button. Ex. 1010 at ¶¶32-33. Accordingly, in combination, Rumbolt, Magnavox,
`
`and Evans teach all elements recited in claims 1-6 of the '067 patent. Thus, there is
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`(cid:3)
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`a reasonable likelihood that at least one of claims 1, 2, 4, and 5 is unpatentable
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`based on this combination.
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`C. Claims 1-6 are Unpatentable in view of Wozniak and CORE
`
`Wozniak and CORE, which were cited individually but not in combination
`
`during the prosecution of the '067 patent, teach all of the limitations of claims 1-6.
`
`Specifically, Wozniak teaches a programmable universal remote control device for
`
`controlling a plurality of home appliances. Ex. 1003 at col. 2, ll. 67-68, FIG. 11.
`
`Further, Wozniak teaches assigning a plurality of commands to a macro button
`
`whereby activation of the macro button causes the remote control to transmit a
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`plurality of operating commands. Ex. 1003 at col. 11, ll. 24-68. Additionally,
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`CORE teaches matching the universal remote control to a plurality of different
`
`home appliances via directly identifying the home appliances via activation of
`
`pushbuttons, which addresses the element added to the claims to gain allowance
`
`(e.g., pushbuttons of the keyboard being activated to directly identify each of the
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`plurality of different home appliances to which the universal remote control is to
`
`be matched). Ex. 1005 at p. 8. A person of ordinary skill in the art would have
`
`recognized Wozniak and CORE as discussing the same device. Ex. 1010 at ¶36.
`
`CORE was cited during prosecution of the '067 patent for teachings related
`
`to macro key functionality. However, the full capabilities of the device taught by
`
`Wozniak and CORE were not explicitly considered by the Examiner during
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`(cid:3)
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`Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`prosecution. Wozniak in combination with CORE provide teachings that are
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`contextually different from those of previously considered prior art, by detailing
`
`the full capabilities of the disclosed universal remote control device in more
`
`complete detail. In addition, Wozniak and CORE teach the precise element that
`
`the Patent Owner added to gain allowance (e.g., pushbuttons of the keyboard being
`
`activated to directly identify each of the plurality of different home appliances to
`
`which the universal remote control is to be matched). See e.g., Ex. 1005 at p. 8.
`
`Accordingly, there is a reasonable likelihood that at least one of claims 1-6 is
`
`unpatentable based on Wozniak in combination with CORE.
`
`D. Claims 1-6 are Unpatentable in view of U.S. Patent No. 4,703,359 and
`CORE
`
`At least one of claims 1-6 are unpatentable under 35 U.S.C. § 103 over U.S.
`
`Patent No. 4,703,359 and CORE as set forth in the Office Action dated January 27,
`
`2003 due to Patent Owner’s failure to properly amend claims to include the
`
`indicated allowable subject matter. Ex. 1008 at p. 26.
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioner provides in the following
`
`section a detailed description of the prior art references, and a detailed comparison
`
`of the claimed subject matter to these prior art references, specifying how each
`
`element of each challenged claim is disclosed. Further information and details
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`(cid:3)
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`supporting the unpatentability of claims 1-6 of the '067 patent over the prior art can
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`be found in the Herr Declaration (Ex. 1010). All emphasis is added unless
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`otherwise indicated.
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`A. Description of the Prior Art
`
`1.
`
`Rumbolt, U.S. Patent No. 4,774,511 (Ex. 1002)
`
`Rumbolt was filed May 30, 1985, and issued as United States Patent No.
`
`4,774,511 on September 27, 1988. Therefore, Rumbolt is prior art under 35 U.S.C.
`
`§ 102(e). Rumbolt teaches a remote control unit that allows for selection and
`
`control of equipment from multiple categories and manufacturers. Ex. 1002 at
`
`Abstract. Rumbolt teaches the use of dual in-line package (DIP) switches
`
`(“switches”) for user selection of the model number and manufacturer of the
`
`equipment to be controlled. Ex. 1002 at col. 3, ll. 23-26. Rumbolt also teaches
`
`chaining commands (e.g., an automatic command sequence) that can be initiated
`
`from depression of a single button. Ex. 1002 at col. 1, l. 61 to col. 2, l. 2. Rumbolt
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`further teaches a library of command codes stored in memory indexed by a
`
`category selector, switches, and a particular key on the keyboard. Ex. 1002 at col.
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`3, ll. 5-40.
`
`2. Wozniak, U.S. Patent No. 4,918,439 (Ex. 1003)
`
`Wozniak was filed October 5, 1988 claiming priority back to an earlier
`
`application filed on June 23, 1987, and issued as United States Patent No.
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`(cid:3)
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`4,918,439 on April 17, 1990. Therefore, Wo