IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`In re Application of: Darbee et al.
`
`Patent No.: 6,587,067
`
`Filed: February 23, 2001
`
`Issued: July 1, 2003
`
`
`Amended Petition for Inter
`Partes Review under 35 U.S.C.
`§§ 311–319 and 37 C.F.R.
`§ 42.100 et seq.
`
`
`
`Assignee: Universal Electronics, Inc.
`
`Case IPR2013-00127
`
`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
`
`
`
`
`AMENDED PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
`NO. 6,587,067
`
`

`

`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`TABLE OF CONTENTS
`
`
`TABLE OF CONTENTS ........................................................................................ i(cid:3)
`
`I.(cid:3) MANDATORY NOTICES ........................................................................... 1(cid:3)
`
`A.(cid:3) Real Party-In-Interest .......................................................................... 1(cid:3)
`
`B.(cid:3) Related Matters ..................................................................................... 1(cid:3)
`
`C.(cid:3) Lead and Back-Up Counsel ................................................................. 2(cid:3)
`
`D.(cid:3)
`
`Service Information .............................................................................. 2
`
`
`
`II.(cid:3)
`
`PAYMENT OF FEES ................................................................................... 3(cid:3)
`
`III.(cid:3) REQUIREMENTS FOR INTER PARTES REVIEW............................... 3(cid:3)
`
`A.(cid:3) Grounds For Standing ......................................................................... 3(cid:3)
`
`B.(cid:3)
`
`Identification of Challenge ................................................................... 3(cid:3)
`1.(cid:3) Claims for which inter partes review is requested ....................... 4(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 ........................... 7(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)
`
`IV.(cid:3) SUMMARY OF THE '067 PATENT .......................................................... 8(cid:3)
`
`A. Summary of the Prosecution History ................................................. 9
`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)
`
`V.(cid:3) DETAILED CLAIM CONSTRUCTION .................................................. 12(cid:3)
`
`(cid:3)- i -
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`

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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`VI.(cid:3) THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '067 PATENT IS UNPATENTABLE ......................... 13(cid:3)
`
`A.(cid:3) Claims 1-6 are Unpatentable in view of Rumbolt and Magnavox . 13(cid:3)
`
`B.(cid:3) Claims 1, 2, 4, and 5 are Unpatentable in view of Rumbolt,
`Magnavox, and Evans ........................................................................ 15
`
`C.(cid:3) Claims 1-6 are Unpatentable in view of Wozniak and CORE ....... 16(cid:3)
`
`D.(cid:3) Claims 1-6 are Unpatentable in view of U.S. Patent No. 4,703,359
`and CORE ........................................................................................... 17(cid:3)
`
`
`VII.(cid:3) DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ............................................................ 17(cid:3)
`
`A.(cid:3) Description of the Prior Art ............................................................... 18(cid:3)
`1.(cid:3) Rumbolt, U.S. Patent No. 4,774,511 (Ex. 1002) ......................... 18(cid:3)
`2.(cid:3) Wozniak, U.S. Patent No. 4,918,439 (Ex. 1003) ......................... 19(cid:3)
`3.(cid:3) Evans, U.S. Patent No. 4,825,200 (Ex. 1004) .............................. 19(cid:3)
`4.(cid:3) CORE Reference Manual (Ex. 1005) .......................................... 20(cid:3)
`5.(cid:3) Magnavox, PR Newswire Press Release (Ex. 1006) .................. 21(cid:3)
`6.(cid:3) Rumbolt U.S. Patent No. 4,703,359 (Ex. 1011) .......................... 21(cid:3)
`
`B.(cid:3) Detailed Grounds for Unpatentability Arguments ......................... 21(cid:3)
`1.(cid:3) Ground 1: Claims 1–6 are Rendered Obvious by Rumbolt in
`view of Magnavox Under 35 U.S.C. § 103 .................................. 21(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 ........................................ 39(cid:3)
`4.(cid:3) Ground 4: Claims 1-6 are Rendered Obvious by Rumbolt '359
`in view of CORE Under 35 U.S.C. § 103 .................................... 50(cid:3)
`
`VIII.(cid:3) CONCLUSION ............................................................................................ 54(cid:3)
`
`
`
`
`
`(cid:3)- ii -
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`

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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`EXHIBIT LIST
`
`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”)
`
`1003. U.S. Patent No. 4,918,439 to Wozniak et al. (“Wozniak”)
`
`1004. U.S. Patent No. 4,825,200 to Evans et al. (“Evans”)
`
`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.
`
`
`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
`
`
`
`
`(cid:3)
`
`- iii -
`
`
`

`

`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`Petitioner Universal Remote Control, Inc. (“URC” or “Petitioner”) hereby
`
`submits this Amended Petition for inter partes review of U.S. Patent No. 6,587,067
`
`(the “’067 patent,” attached as Ex. 1001) to address the matters raised in the
`
`communication from the PTAB dated January 30, 2013. By this Amended
`
`Petition, Petitioner respectfully requests inter partes review of claims 1-6 of the
`
`'067 patent in accordance with 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et
`
`seq.
`
`I.
`
`MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), URC provides the following mandatory
`
`disclosures.
`
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that URC is the real
`
`party-in-interest.
`
`B. Related Matters
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that claims 1-3 and 6 of
`
`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.),
`
`filed on March 2, 2012 (the “UEI Litigation”). The UEI Litigation remains
`
`pending. The patents-in-suit are U.S. Patent Nos. 5,414,426; 5,568,367; 5,614,906
`
`and 6,587,067.
`
`(cid:3) 1
`
`
`
`

`

`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`This Petition is directed to the ‘067 patent; however, petitions for inter
`
`partes review and/or ex parte reexamination corresponding to the remaining
`
`patents in the UEI Litigation will also soon be filed. In light of this, the Patent
`
`Trial & Appeal Board (PTAB) may wish to consolidate one or more of any other
`
`inter partes review actions related to this matter to a single panel of Administrative
`
`Patent Judges for administrative efficiency.
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel:
`
`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
`
`counsel is provided above.
`
`(cid:3) 2
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`
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`

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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`II. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge $27,200 to Deposit Account
`
`No. 19-0743 as the fee required by 37 C.F.R. § 42.15(a) for this Petition. Review
`
`of six claims is being requested, so any excess claims fee is not included in this fee
`
`calculation. The undersigned further authorizes payment for any additional fees
`
`that might be due in connection with this Petition to be charged to the above
`
`referenced Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below, each requirement of 37 C.F.R. § 42.104 for inter partes
`
`review of the '067 patent is satisfied.
`
`A. Grounds For Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the '067
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from petitioning for inter partes review of the '067 patent on the grounds
`
`identified herein.
`
`B. Identification of Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
`
`is that the PTAB cancel as unpatentable claims 1-6 of the '067 patent.
`
`
`
`
`
`(cid:3) 3
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`
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`

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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`1. Claims for which inter partes review is requested
`
`Pursuant to 37 C.F.R. § 42.104(b)(1), Petitioner requests inter partes review
`
`of claims 1-6 of the '067 patent.
`
`2. The specific art and statutory ground(s) on which the challenge
`is based
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '067 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`'067 patent under 35 U.S.C. § 102(a) and/or (e):
`
`(1) United States Patent No. 4,774,511 to Rumbolt et al. (“Rumbolt”),
`
`issued on October 27, 1988 based on an application filed May 30, 1985
`
`(Ex. 1002). Accordingly, Rumbolt is prior art to the '067 patent under at
`
`least 35 U.S.C. § 102(e).
`
`(2) United States Patent No. 4,918,439 to Wozniak et al. (“Wozniak”),
`
`issued on April 17, 1990 based on an application with a priority date of
`
`June 23, 1987 (Ex. 1003). Accordingly, Wozniak is prior art to the '067
`
`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
`
`April 25, 1989 based on an application filed June 25, 1987 (Ex. 1004).
`
`Accordingly, Evans is prior art to the '067 patent under at least 35
`
`U.S.C. § 102(e).
`
`(cid:3) 4
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`
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`

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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`(4) Ron Karr, Robert Retzlaff, Tom Johnson, Chuck Van Dusen, and Meg
`
`Beeler, “CORE Reference Manual,” 1987, pp. i-91 (“CORE”), published
`
`by at least September 1, 1987 (Ex. 1005). Accordingly, CORE is prior
`
`art under at least 35 U.S.C. § 102(a).
`
`(5) PR Newswire, Magnavox unveils Total Remote Tuning System and
`
`second generation Universal Remote Control. [Press Release], NAP
`
`Consumer Electronics Corp., Retrieved from DIALOG (“Magnavox”),
`
`published April 9, 1987 (Ex. 1006). Accordingly, Magnavox is prior art
`
`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”),
`
`issued on October 27, 1987 based on an application filed November 20,
`
`1985 (Ex. 1011). Accordingly, Rumbolt ('359) is prior art to the '067
`
`patent under at least 35 U.S.C. § 102(e).
`
`While some of the references submitted as part of this Petition were
`
`considered, discussed on the record, or applied by the Examiner during original
`
`prosecution of the application that matured into the '067 patent, they are asserted
`
`here for disclosure of technological teachings not discussed or relied upon by the
`
`Examiner. Additionally, some of the references were not substantively considered,
`
`discussed on the record, or applied by the Examiner during original prosecution of
`
`the application that matured into the '067 patent, and present new, non-cumulative
`
`(cid:3) 5
`
`
`
`

`

`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`technological teachings. Further, the references submitted in this Petition that were
`
`of record in the original prosecution are all being presented in a new light not
`
`previously considered, such as in a new combination demonstrating the
`
`obviousness of the claims of the '067 patent. Moreover, claim amendments prior to
`
`issue that purported to recite subject matter indicated to be allowable were
`
`defective, rendering the issued claims unpatentable for the reasons set forth in the
`
`ex parte prosecution. A detailed discussion of the references and their applicability
`
`to claims 1-6 of the '067 patent is provided starting in Section VII(A).
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '067 patent
`
`is requested on the following grounds.
`
`Ground 1. Claims 1-6 are obvious under 35 U.S.C. § 103 over Rumbolt in
`
`view of Magnavox.
`
`Ground 2. Claims 1, 2, 4, and 5 are obvious under 35 U.S.C. § 103 over
`
`Rumbolt in view of Magnavox, in further view of Evans.
`
`Ground 3. Claims 1-6 are obvious under 35 U.S.C. § 103 over Wozniak in
`
`view of CORE.
`
`Ground 4. Claims 1-6 are obvious under 35 U.S.C. § 103 over U.S.
`
`4,703,359 and CORE as set forth in the Office Action dated January 27, 2003 due
`
`to Patent Owner’s failure to properly claim indicated allowable subject matter.
`
`
`
`(cid:3) 6
`
`
`
`

`

`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`3. How the challenged claims are to be construed
`
`Pursuant to 37 C.F.R. § 42.104(b)(3), the claims of a patent subject to inter
`
`partes review normally receive the “broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear.” 37 C.F.R. § 42.100(b).
`
`However, the '067 patent expired on October 14, 2007, so the claims are not subject
`
`to amendment and should be construed pursuant to the principles set forth by the
`
`court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed.
`
`Cir. 2005) (words of a claim “are generally given their ordinary and customary
`
`meaning” as understood by a person of ordinary skill in the art in question at the time
`
`of the invention); see also, MPEP 2258(I)(G). A discussion of how the key claim
`
`terms should be construed is provided in Section V, below.
`
`4. How the construed claims are unpatentable under the statutory
`grounds identified in 37 C.F.R. § 42.104(b)(2).
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how the claims 1-6
`
`of the '067 patent are unpatentable under the statutory grounds identified above,
`
`including an identification of where each element is found in the prior art patents
`
`or printed publications, is provided in Section VII(B), below.
`
`5. Supporting evidence relied upon to support the challenge
`
`Pursuant to 37 C.F.R. § 42.104(b)(5), the exhibit numbers of the supporting
`
`evidence relied upon to support the challenges and the relevance of the evidence to
`
`the challenges raised, including identifying specific portions of the evidence that
`
`(cid:3) 7
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`
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`

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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`support the challenges, are provided in an exhibit list attached herein. Further
`
`supporting evidence, including detailed discussions of the respective prior art
`
`references, is provided in the Herr Declaration (Ex. 1010).
`
`IV. SUMMARY OF THE '067 PATENT
`
`The ’067 patent is directed to a universal remote control for transmitting
`
`infrared signals to a remote control receiver built into a television or other
`
`electrical device, to remotely control the device by turning it on, changing the
`
`channel, adjusting the volume, etc. Ex. 1001 at col. 1, ll. 42-48. The invention of
`
`the ’067 patent is described as relating to “a method for acquiring the infrared
`
`codes” for the electrical device to be controlled and “generating code data related
`
`to these infrared codes for storage in a remote control device”. Ex. 1001 at col. 1,
`
`ll. 49-52.
`
`The ’067 patent explains that the remote control can be used to find code
`
`data in a library or table in order to generate “infrared codes for operating different
`
`electrical apparatus made by different manufacturers”. This code data is used to
`
`generate the appropriate coded infrared signals for operating the controlled
`
`electrical device. Ex. 1001 at col. 1, ll. 49-60. Further, the remote control includes
`
`the ability to assign to a “macro” pushbutton a subset of the selected codes and
`
`data from the library to produce a sequence of operating commands to control one
`
`(cid:3) 8
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`

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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`or more of the matched home appliances. See id; see also id. at FIG. 18A, FIG.
`
`18B, and at col. 14, ll. 14-22.
`
`A. Summary of the Prosecution History
`
`Application Serial No. 09/791,354 (“the ’354 application”) was filed on
`
`February 23, 2001 and issued as U.S. Patent No. 6,587,067 on July 1, 2003. The
`
`’354 application was filed with five claims, and claimed benefit of priority under
`
`35 U.S.C. § 120 to Application Serial No. 09/109,336 filed on October 14, 1987
`
`through a multitude of applications filed between October 14, 1987 and February
`
`23, 2001 (including multiple continuation-in-part applications). The term of the
`
`’067 patent expired on October 14, 2007.
`
`1. Prosecution and Issuance of the ’067 patent
`
`A first Office Action addressing claim patentability was mailed on June 26,
`
`2002. In that Office Action, the Examiner rejected claims 1-5 under 35 U.S.C. §
`
`102(b) as anticipated by the Patent Owner’s own prior U.S. Patent No. 4,959,810.
`
`The Examiner also rejected claims 1-5 under 35 U.S.C. § 112, second paragraph,
`
`as being indefinite. The Patent Owner conducted an Examiner interview
`
`thereafter, during which the Examiner agreed to remove both the § 112 and §
`
`102(b) rejections of the pending claims, followed by an Office Action response on
`
`July 11, 2002. A Notice of Allowance was mailed on July 31, 2002, allowing
`
`claims 1-5.
`
`(cid:3) 9
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`

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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`On October 9, 2002, Patent Owner filed a Request for Continued
`
`Examination (RCE) in which claims 6-10 were added. Independent claim 6 was
`
`directed to a method version of the readable medium of claim 1, and claims 7-10
`
`were dependent to claim 6. A Non-Final Office Action was mailed on January 27,
`
`2003 in response to the RCE. Claims 4 and 9 were indicated as allowable if
`
`rewritten in independent form, while claims 1-3, 5-8, and 10 were rejected under
`
`35 U.S.C. § 103(a) as being unpatentable over Rumbolt et al. (U.S. Patent No.
`
`4,703,359, continuation-in-part of U.S. Patent No. 4,774,511 (Ex. 1002)) in view
`
`of the CORE Reference Manual (Ex. 1005, hereinafter “CORE”).
`
`
`
`In response to the Office Action of January 27, 2003, Patent Owner
`
`represented that it amended claims 4 and 9 to incorporate all recitations of the
`
`respective parent claims, and canceled claims 3, 5, 8, and 10. Claim 1 was
`
`amended to recite “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,” and claim 6 was similarly amended. A second Notice of
`
`Allowance was thereafter mailed on April 2, 2003. The Notice of Allowance
`
`indicated that claims 1-2, 4, 6-7, and 9 were allowed, the prior rejections being
`
`withdrawn “because subject matter previously indicated as allowable have been
`
`incorporated into the claims.” Ex. 1002, p. 9. A certificate of correction to the
`
`(cid:3) 10
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`
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`

`

`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
`
`issued patent was requested by the Patent Owner on July 29, 2004, and issued
`
`shortly thereafter to correct mistakes in issued claims 3, 4, and 6.
`
`2. Reexamination Serial No. 90/007,876
`
`On January 17, 2006, a request for ex parte reexamination of the ’067 patent
`
`was filed, proposing a rejection of issued claims 1-6 based on a prior art reference
`
`entitled “Home Run Micromint’s Home Control System Users Manual”
`
`(hereinafter “Micromint”), a reference not considered during examination of the
`
`original patent. The claims were thereafter rejected under Micromint and the
`
`Patent Owner appealed a final rejection of all claims to the Board of Patent
`
`Appeals and Interferences (BPAI). The Patent Owner distinguished the claims
`
`from the cited reference by arguing that the reference did not disclose a library of
`
`codes and data comparable to that recited in the claims of the ’067 patent.
`
`On appeal, both the Patent Owner and the Board agreed that because the
`
`’067 patent was expired at the time of reexamination, the claims were to be
`
`construed pursuant to the principles set forth in Phillips v. AWH Corp., 415 F.3d
`
`1303, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). Ultimately, the BPAI reversed the
`
`rejections in a decision on September 13, 2010. The BPAI determined that the
`
`“codes” recited as part of the library of codes and data in the ’067 patent were
`
`distinguishable from the Micromint reference. See Ex. 1009, pp. 24-28. A
`
`reexamination certificate with no claim amendments issued shortly thereafter.
`
`(cid:3) 11
`
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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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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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`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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`Since the ‘067 patent is expired, pursuant to Phillips v. AWH Corp. the claim
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`terms should take on their ordinary and customary meaning as one of ordinary skill
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`in the art would have understood them. The PTAB may also wish to consider the
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`claim interpretations made by the BPAI during the first reexamination of the ‘067
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`patent. Those claim interpretations are summarized below.
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`During the first reexamination of the ‘067 patent, all of the finally rejected
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`claims were appealed to the BPAI. As part of its decision, the BPAI first construed
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`certain claim terms. In particular, the BPAI construed the word “codes” (which
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`appears in each independent claim) to mean “transmission schemes for relaying
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`‘data’ to a controlled apparatus.” Ex. 1009 at p. 26. In doing so, the BPAI rejected
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`the Patent Owner’s proffered construction of “plural modulation schemes, carrier
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`frequencies, bit encoding schemes, etc., i.e., systems of signals used to represent
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`numbers (i.e., 0s and 1s) in transmitting messages, that are to be used to transmit
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`‘data’ to plural different appliances” as being overly narrow since it excluded the
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`Fig. 11i embodiment of the ‘067 patent. The BPAI also rejected the Examiner’s
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`(cid:3) 12
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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`proposed construction of “one of a set of symbols used to represent information or
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`an assigned meaning” (i.e., “blink codes”) as being overly broad.
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`The only other claim term that the BPAI addressed was “data.” The Patent
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`Owner argued that “data” should be interpreted as a “pattern of bits, i.e., 0s and 1s,
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`that are to be sent from the universal remote control to the appliances,” while the
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`Examiner argued that it should mean “information even when expressed with
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`binary digits.” The BPAI did not adopt either definition since it found that the key
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`prior art reference (Micromint) failed to teach a library of codes and data under
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`either interpretation of “data.” Id.
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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
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`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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`(cid:3) 13
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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`ll. 5-40. Rumbolt also teaches directly identifying each of the plurality of different
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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
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`to directly identify each of the plurality of different home appliances to which the
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`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) 14
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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`universal remote control is to be matched). Therefore, there is a reasonable
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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
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`or 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.
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`As discussed above, Rumbolt in combination with Magnavox teach or
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`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
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`ordinary skill in the art would have understood that Rumbolt’s command chaining
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`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,
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`(cid:3) 15
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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`and Evans teach all elements recited in claims 1-6 of the '067 patent. Thus, there is
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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
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`Wozniak and CORE, which were cited individually but not in combination
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`during the prosecution of the '067 patent, teach all of the limitations of claims 1-6.
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`Specifically, Wozniak teaches a programmable universal remote control device for
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`controlling a plurality of home appliances. Ex. 1003 at col. 2, ll. 67-68, FIG. 11.
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`Further, Wozniak teaches assigning a plurality of commands to a macro button
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`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
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`home appliances via directly identifying the home appliances via activation of
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`pushbuttons, which addresses the element added to the claims to gain allowance
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`(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
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`be matched). Ex. 1005 at p. 8. A person of ordinary skill in the art would have
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`recognized Wozniak and CORE as discussing the same device. Ex. 1010 at ¶36.
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`CORE was cited during prosecution of the '067 patent for teachings related
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`to macro key functionality. However, the full capabilities of the device taught by
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`(cid:3) 16
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`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067
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`Wozniak and CORE were not explicitly considered by the Examiner during
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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
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`the full capabilities of the disclosed universal remote control device in more
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`complete detail. In addition, Wozniak and CORE teach the precise element that
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`the Patent Owner added to gain allowance (e.g., pushbuttons of the keyboard being
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`activated to directly identify each of the plurality of different home appliances to
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`which the universal remote control is to be matched). See e.g., Ex. 1005 at p. 8.
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`Accordingly, there is a reasonable likelihood that at least one of claims 1-6 is
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`unpatentable based on Wozniak in combination with CORE.
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`D. Claims 1-6 are Unpatentable in view of U.S. Patent No. 4,703,359
`and CORE
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`At least one of claims 1-6 are unpatentable under 35 U.S.C. § 103 over U.S.
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`Patent No. 4,703,359 and CORE as set forth in the Office Action dated January 27,
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`2003 due to Patent Owner’s failure to properly amend claims to include the
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`indicated allowable subject matter. Ex. 1008 at p. 26.
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`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
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`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioner provides in the following
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`section a detailed description of the prior art references, and a detailed comparison
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`of the claimed subject matter to these prior art references, specifying how each
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`(cid:3) 17
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`Amen