IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Applicant:
`
`Darbee et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2013-00127
`
`v.
`
`Filing Date:
`
`2/23/2001
`
`Patent No.:
`
`6,587,067
`
`Title:
`
`Universal Remote
`Control With Macro
`Command Capabilities
`
`Universal Electronics, Inc.
`
`Trial Paralegal: Andrew Kellog
`
`Attny Doc.: 059489.05US5/IPR
`
`UEI’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`24TH day of March, 2014
`
`/Eric J. Maiers/
`By:
` Eric J. Maiers
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Applicant:
`
`Darbee et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2013-00127
`
`v.
`
`Filing Date:
`
`2/23/2001
`
`Patent No.:
`
`6,587,067
`
`Title:
`
`Universal Remote
`Control With Macro
`Command Capabilities
`
`Universal Electronics, Inc.
`
`Trial Paralegal: Andrew Kellog
`
`Attny Doc.: 059489.05US5/IPR
`
`UEI’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`24TH day of March, 2014
`
`/Eric J. Maiers/
`By:
` Eric J. Maiers
`
`
`
`IPR2013-00127
`
`Patent Owner’s Exhibit List
`
`Claim Construction Order from Universal Electronics, Inc. v.
`Universal Remote Control, Inc., C.D.Cal. Civ. No. 8:12-cv-00329
`
`Declaration of Paul Darbee from U.S. Ser. No. 07/586,957
`
`U.S. Patent No. 6,587,067 to Darbee, et al. (with Reexamination
`Certificate)
`
`Scheduling Order from Universal Electronics, Inc. v. Universal
`Remote Control, Inc., C.D.Cal. Civ. No. 8:12-cv-00329
`
`Declaration of Richard Ellis
`
`Declaration of Patrick Hayes
`
`Transcript of Deposition of Alan Herr
`
`2001.
`
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`i
`
`
`
`IPR2013-00127
`
`I.
`
`INTRODUCTION
`
`The facts relevant to Universal Electronics, Inc.’s (“UEI”) motion are
`
`simple: Petitioner Universal Remote Control, Inc. (“URC”) posed leading
`
`questions to its proposed expert, Dr. Alan J. Herr, that went to material issues in
`
`dispute, and UEI’s counsel timely objected to those questions. As such, the Board
`
`should exclude Dr. Herr’s testimony in response to those questions, as well as any
`
`subsequent reliance thereon by URC in its briefing and oral arguments.
`
`II.
`
`THE BOARD SHOULD EXCLUDE DR. HERR’S TESTIMONY
`OFFERED IN RESPONSE TO LEADING QUESTIONS.
`
`While URC correctly defined leading questions as those questions that are
`
`framed in such as manner as to suggest the answer sought to be obtained, URC’s
`
`Opposition exhibits a fundamental misunderstanding in the application of that
`
`definition to determine what does and does not constitute a leading question.
`
`According to URC, if a negative response to a question is just as likely as a
`
`positive response, the question cannot be leading. But this cannot possibly the
`
`case, because a witness always has the ability to answer “yes” or “no” to any
`
`question. For example, the question “Isn’t your favorite color blue?” is a leading
`
`question that suggests to the witness that his or her favorite color is blue. The fact
`
`that a witness could respond “no” to the above question does not change the fact
`
`that the question is leading as phrased.
`
`1
`
`
`
`IPR2013-00127
`
`Contrary to URC’s narrow view of leading questions, its counsel’s questions
`
`to Dr. Herr were in fact leading. The table below illustrates how URC’s counsel’s
`
`leading questions suggested answers to Dr. Herr, and then provides examples of
`
`how those questions could have been phrased so as not to be leading.
`
`URC’s Leading Question
`
`Suggested Answer
`
`Non-Leading
`Alternative Phrasing
`
`Does that indicate to you that it
`
`It is also possible in Core
`
`Does that indicate
`
`is also possible in Core to have
`
`to have preprogramed
`
`anything to you?
`
`preprogramed remote controller
`
`remote controller codes.
`
`codes?” (Ex. 2007 at 86:5-7.)
`
`So are those examples of what
`
`Those are examples of
`
`What are those?
`
`you were referring in response
`
`what he was referring to
`
`to counsel’s questions about
`
`in response to counsel’s
`
`directly identifying? (Id. at
`
`questions about directly
`
`88:20-22.)
`
`identifying.
`
`And they are typically one
`
`They are typically one
`
`Typically, how many
`
`number? (Id. at 89:8.)
`
`number.
`
`numbers are they?
`
`Not surprisingly, Dr. Herr followed URC’s counsel’s lead in responding to
`
`each of the above questions. The above questions are not insignificant. They
`
`involve the ultimate conclusion of whether certain prior art references disclose
`
`2
`
`
`
`IPR2013-00127
`
`certain claim limitations—limitations which Dr. Herr, just moments earlier during
`
`his cross-examination, conceded were not present. (See Ex. 2007 at 82:2-83:18.)
`
`The Board should exclude and disregard URC’s attempts to rehab its case by
`
`putting words into its expert’s mouth, and the Board should likewise exclude and
`
`disregard URC’s subsequent reliance on that improperly elicited testimony in its
`
`briefing and at the Oral Hearing.1
`
`III. THE BOARD SHOULD DISREGARD AND EXCLUDE SECTION III
`OF URC’S OPPOSITION
`
`URC’s actual arguments in opposition to UEI’s Motion to Exclude are found
`
`in the first four pages of its brief. However, URC then proceeds to use the next
`
`four pages of its brief to re-hash arguments concerning prior art and its invalidity
`
`allegations. Indeed, the very title of that section—REGARDLESS OF
`
`WHETHER DR. HERR’S ANSWERS ARE EXCLUDED OR NOT, THE PRIOR
`
`ART DOCUMENTS ABOUT WHICH HE WAS ASKED SPEAK FOR
`
`THEMSELVES (URC’s Opposition to UEI’s Motion to Exclude Evidence, at 5
`
`(emphasis added))—confirms that its contents do not address the merits of UEI’s
`
`Motion to Exclude. The Board should therefore disregard and exclude Section III
`
`
`1 URC also attempts to justify its leading questions by analogizing them to questions UEI posed
`to its expert, Pat Hayes. Clearly, the questions UEI’s counsel asked at a different deposition
`have nothing to do whether URC’s counsel’s questions of Dr. Herr were leading. Further, while
`UEI disputes that any improper leading questions were asked of Mr. Hayes on redirect, UEI
`notes that URC neither objected to the subject questions during Mr. Hayes’ deposition nor
`moved to exclude them.
`
`3
`
`
`
`IPR2013-00127
`
`of URC’s Opposition in its entirety as improperly and belatedly attempting to raise
`
`additional arguments relating to the merits of URC’s Petition.
`
`IV. CONCLUSION
`
`For the foregoing reasons, UEI respectfully requests that the Board grant its
`
`Motion to Exclude Evidence Under 37 C.F.R. § 42.64(c) and exclude Dr. Herr’s
`
`testimony in response to URC’s leading questions and preclude URC from relying
`
`upon that testimony in any manner in these proceedings.
`
`Date: March 24, 2014
`
`Respectfully Submitted,
`
`GREENBERG TRAURIG, LLP
`
`/Eric J. Maiers/
`By: Michael A. Nicodema; Reg. No. 33,199
`200 Park Avenue
`P.O. Box 677
`Florham Park, NJ 07932-0677
`
`Gary R. Jarosik; Reg. No. 35,906
`Eric J. Maiers; Reg. No. 59,614
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`(312) 456-8449
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Timothy E. Bianchi
`Schwegman, Lundberg & Woessner, P.A.
`1600 TCF Tower
`121 South Eighth Street
`Minneapolis, MN 55402
`tbianchi@slwip.com; IPR-request@slwip.com
`
`Thomas C. Reynolds
`Schwegman, Lundberg & Woessner, P.A.
`150 Almaden Blvd.
`Suite 750
`San Jose, CA 95113
`treynolds@slwip.com
`
`Date:
`
`March 24, 2014
`
`/Eric J. Maiers/
`Eric J. Maiers
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