UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`UNIVERSAL REMOTE CONTROL, INC.
`Petitioner
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`v.
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`UNIVERSAL ELECTRONICS, INC.
`Patent Owner
`_________________________
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`Case: IPR2013-00127
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`Patent: 6,587,067
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`_________________________
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`PETITIONER UNIVERSAL REMOTE CONTROL’S OPPOSITION TO
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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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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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`UNIVERSAL REMOTE CONTROL, INC.
`Petitioner
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`v.
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`
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`UNIVERSAL ELECTRONICS, INC.
`Patent Owner
`_________________________
`
`Case: IPR2013-00127
`
`Patent: 6,587,067
`
`_________________________
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`PETITIONER UNIVERSAL REMOTE CONTROL’S OPPOSITION TO
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`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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`Patent Owner Universal Electronics, Inc. (“UEI”) has moved to exclude
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`certain answers to deposition questions given by Petitioner Universal Remote
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`Control’s (“URC”) expert Dr. Alan Herr during redirect examination by URC’s
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`counsel. UEI’s motion should be denied since (a) the questions posed to Dr. Herr
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`were not leading because they did not suggest the desired answer, and (b) UEI’s
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`counsel posed the very same types of questions during redirect examination of its
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`own expert, Patrick Hayes. In addition, regardless of whether Dr. Herr’s answers
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`are excluded or not, those answers do not and cannot change the fact of what the
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`prior art documents themselves show that were the subject of the objected to
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`questions.
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`I.
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`THE OBJECTED TO QUESTIONS WERE NOT LEADING
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`The definition of a leading question is “a question put or framed in such a
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`form as to suggest the answer sought to be obtained by the person interrogating” or
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`one that “puts into a witness’ mouth the words that are to be echoed.” The Law
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`Dictionary (featuring Black’s Law Dictionary Free Online Legal Dictionary 2nd
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`Ed.) http://thelawdictionary.org/leading-question/ The questions objected to by
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`UEI’s counsel were not leading since they did not suggest the answer sought to be
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`obtained. The three objected to questions are set forth below:
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`#1: Does that indicate to you that it is also possible in Core to have
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`preprogrammed remote controller codes?
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`1
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`#2: So are those examples of what you were referring in response to
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`counsel’s questions about directly identifying?
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`#3: All right. And they are typically one number?
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`None of these questions gave Dr. Herr an indication as to the desired answer.
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`For example, Dr. Herr’s answer to Question #2 was “yes,” thereby indicating that
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`the numbers found on the referenced page were examples of “directly identifying.”
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`But suppose the desired answer was actually the opposite, namely, that the
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`numbers were not examples of “directly identifying.” How could the question
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`have been phrased differently so as to ensure such an answer? A question along
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`the lines of “The numbers on that page are not examples of ‘directly identifying,’
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`correct?” would have presumably worked since the question clearly seeks to “put
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`into a witness’ mouth the words that are to be echoed.” Id. That clearly would
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`have been an impermissible leading question. However, an open-ended question
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`such as “Are those examples of …?” does not suggest to the witness whether the
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`desired answer is “yes” or “no” nor does it attempt to place words into the witness’
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`mouth. Put another way, a negative response by Dr. Herr to the question was just
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`as likely as a positive response and therefore, by definition, the question was not
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`leading. The same is true of the other two questions. Therefore, none of the three
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`questions were impermissibly leading.
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`
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`2
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`
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`II. URC’S QUESTIONS TO ITS EXPERT ON REDIRECT WERE NO
`DIFFERENT IN FORM TO THOSE POSED BY UEI TO ITS
`EXPERT ON REDIRECT
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`
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`That the questions posed to Dr. Herr were permissible and not leading is
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`further underscored by the fact that UEI’s counsel posed the very same type of
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`questions to its own expert, Mr. Hayes, without objection by URC. For example,
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`Mr. Hayes (a long-time employee of UEI who recently retired from full-time
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`employment but continues to do consulting for them) purports to be an expert in
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`the design of universal remote controls1 and submitted a declaration on behalf of
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`UEI in which he opines about various matters relating to the ‘067 patent and the
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`prior art. After cross examination of Mr. Hayes by URC’s counsel, UEI’s counsel
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`posed the following questions on redirect examination:
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`Q. Mr. Hayes, I’m going to direct your attention to that same passage in
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`the CORE manual to which Mr. Reynold[s] was referring, specifically the
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`sentence that says, “When you bought your Core, it actually came with pre-
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`stored commands from a few remote controllers.” Do you see that?
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`A. Yes.
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`Q.
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`Even assuming that those few remote controllers were, let’s say, five
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`TVs and five VCRs, those prestored commands to which are being referred
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`there, do those refer to a library of codes and data?
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`A. No they do not, they’re simply waveform information.
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`(Ex. 1016 at 87:24-88:13)
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`1 See Hayes deposition transcript, Ex. 1016 at 21:7-10.
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`3
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`
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`These two questions posed by UEI’s counsel to its expert were of the same
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`general form as those posed by URC to its expert to which UEI now
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`disingenuously objects. In both cases counsel first directed the witness to a
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`passage from a document about which they wished to ask a clarifying question. In
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`both cases counsel then asked a question about the referenced passage in the
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`general form of “Does that passage show X?” Here are the actual questions
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`juxtaposed (with emphasis added) to show the similarity:
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`URC’s counsel’s question to Dr. Herr:
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`UEI’s counsel’s question to Mr. Hayes:
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`“Does that indicate to you that it is also
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`“Even assuming that those few remote
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`possible
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`in
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`Core
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`to
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`have
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`controllers were, let’s say, five TVs and
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`preprogrammed
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`remote
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`controller
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`five VCRs, those prestored commands
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`codes?”
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`to which are being referred there, do
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`those refer to a library of codes and
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`data?”
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`
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`In neither case was the answer that counsel desired suggested by the
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`question itself. In fact, the answer given to URC’s counsel’s question was
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`basically “yes” while the answer to UEI’s counsel’s question was basically “no.”
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`In neither case did counsel attempt to put words into the witness’ mouth by posing
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`the question in a way suggestive of the answer such as “Doesn’t that passage
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`indicate to you that Core does in fact have preprogrammed remote controller
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`codes?” or “Those prestored commands being referred to there do not constitute a
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`
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`4
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`
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`library of codes and data, correct?” Such questions clearly would have been
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`impermissibly leading.
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`III. REGARDLESS OF WHETHER DR. HERR’S ANSWERS ARE
`EXCLUDED OR NOT, THE PRIOR ART DOCUMENTS ABOUT
`WHICH HE WAS ASKED SPEAK FOR THEMSELVES
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`
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`In its motion, UEI claims that during redirect examination Dr. Herr changed
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`his testimony regarding whether or not the CORE/Wozniak references disclose a
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`universal remote control that “directly identifies” ID and model number of an
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`appliance to be controlled. This is a blatant mischaracterization of Dr. Herr’s
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`testimony. As explained more fully in Petitioner’s Reply to Patent Owner’s
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`Response (Paper no. 21 at 14-15), Dr. Herr was consistent throughout his
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`testimony and did not change his answers during redirect examination. Dr. Herr’s
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`original testimony in response to questions from UEI’s counsel had to do with the
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`information contained on page 9 (Bates numbered page 10) of the CORE
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`Reference Manual (Ex. 1005). (See Herr transcript, Ex. 2007 at 82:13-83:12) That
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`page is entitled “Learning the Infrared (IR) Command” and describes how the
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`CORE universal remote control can “learn” commands from another remote
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`control by placing the other remote control head-to-head with the CORE remote
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`control and then entering certain key sequences. Thus, the referenced page
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`unequivocally describes one method by which codes are initially entered into the
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`CORE remote – it has nothing at all to do with how the stored codes are later
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`5
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`
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`matched with appliances of different manufacturers. It is this latter step that is the
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`subject of the claims of the ‘067 patent.
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`For example, the preamble of claim 1 refers to a universal remote control
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`comprising, among other things, a library of codes and data. The claim is silent as
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`to how the library of codes and data is entered into the remote. The “directly
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`identifying” language that was the subject of UEI’s counsel’s questions to Dr.
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`Herr, on the other hand, is found in the body of claim 1. That language has
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`nothing to do with how the library of codes and data is stored, but rather how the
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`user selects the right codes from the library that match the remote that is to be
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`emulated. Specifically, the claim requires that the universal remote control first be
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`matched to one of a plurality of different manufacturers by “directly identifying”
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`the manufacturer (e.g., by entering “05” for Sony).
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`
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`With this background in mind, UEI’s counsel began by asking Dr. Herr if
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`the CORE Reference Manual discloses “entering the user I.D. and model number
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`of a target device via push buttons?” (Ex. 2007 at 82:21-23; emphasis added) Dr.
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`Herr referred to page 9 of the manual (Bates numbered page 10) that describes the
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`“learning mode” of entering codes into the remote and – based on his review of
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`that page – concluded that the manual does not disclose entering the manufacturer
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`codes directly by pushing buttons. (Ex. 2007 at 82:24-83:18) Since Dr. Herr had
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`only focused on page 9 (Bates numbered page 10) in reaching his conclusion
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`6
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`
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`regarding CORE depicting a purely “learning” remote control, on redirect
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`examination counsel for URC directed Dr. Herr’s attention to Bates numbered
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`page 9 of the CORE Reference Manual entitled “Storing Your Commands in
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`CORE.” That section clearly states that the CORE remote control – in addition to
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`having the capability to learn codes from other remotes – also comes
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`preprogrammed with codes of various manufacturers (and therefore is not a purely
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`“learning” remote). URC’s counsel then asked Dr. Herr if that page indicated that
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`the CORE remote came preprogrammed with codes and Dr. Herr agreed. (Ex.
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`2007 at 85:1-86:25) That is one of the questions to which UEI now objects
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`(Question #1).
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`As set forth above, Dr. Herr’s answer to Question #1 on redirect had nothing
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`at all to do with the “directly identifying” language asked about by UEI’s counsel.
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`Instead, Dr. Herr merely clarified that the CORE remote was in fact not a purely
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`remote control but rather one that also came preprogrammed with manufacturers’
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`codes. This is a fact. Thus, even if Dr. Herr’s answer was excluded as UEI now
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`requests, (a) it would not change the fact of what the CORE Reference Manual
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`discloses (namely, that it came with preprogrammed codes), and (b) would be
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`irrelevant to the issue of whether the CORE remote is capable of “directly
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`identifying” various manufacturers as required by the claims of the ‘067 patent.
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`7
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` Dr. Herr’s answers to Question #2 and #3 likewise did not in any way
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`change his prior testimony and, in any event, cannot alter the content of the
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`underlying document that formed the basis for both questions. Question #2 was
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`directed to the Magnavox reference (Ex. 1006) and merely inquired as to whether
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`the manufacturer numbers found on page 2 of the reference were examples of code
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`numbers that would “directly identify” various manufacturers. (Ex. 2007 at 88:10-
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`89:6) Again, the Magnavox document speaks for itself even without Dr. Herr’s
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`testimony. Ultimately, it is the Board that must determine whether the codes
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`depicted on page 2 of the Magnavox reference directly identify manufacturers or
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`not. Question #3 was simply a follow-up to Question #2 and asked whether in
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`general the manufacturer ID codes (as Dr. Herr referred to them) are typically one
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`number.2 However, whether manufacturer codes are typically expressed as a
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`single number or multiple numbers is irrelevant since the claims of the ‘067 patent
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`make no such distinction and are not confined to a specific “form” of number.
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`
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`/Tom Reynolds/
`Date: March 17, 2014 By _____________________________________
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`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
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`2 Dr. Herr’s answer itself is further proof that the question was not impermissible.
`Presumably, if the question was leading then the desired answer would be either
`“Yes, they are typically one number” or “No, they are not typically one number”
`(implying multiple numbers). Instead, Dr. Herr’s response was that they could be
`either one or more numbers. (Ex. 2007 at 89:10-21)
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`
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`8
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`Certificate of Service
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`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) on counsel
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`of record for the Patent Owner by email as authorized by the Patent Owner at the
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`following e-mail addresses:
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`jarosikg@gtlaw.com; maierse@gtlaw.com; and chiipmail@gtlaw.com
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`Respectfully submitted,
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`/Tom Reynolds/
`Date: March 17, 2014 By _____________________________________
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`Thomas C. Reynolds
`Reg. No. 32.488
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`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`P.O. Box 2938
`Minneapolis, MN 55402
`(612) 373-6912
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`9
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