Petitioner’s Trial Presentation
`Inter Partes Review
`IPR2013‐00127
`U.S. Patent No. 6,587,067
`“Universal Remote Control With
`Macro Command Capabilities”
`
`Oral Hearing: April 8, 2014, 1 p.m.
`URC Exhibit 1017
`URC v. UEI
`Case IPR2013‐00127
`
`1
`
`
`Inter Partes Review
`IPR2013‐00127
`U.S. Patent No. 6,587,067
`“Universal Remote Control With
`Macro Command Capabilities”
`
`Oral Hearing: April 8, 2014, 1 p.m.
`URC Exhibit 1017
`URC v. UEI
`Case IPR2013‐00127
`
`1
`
`
`
`Argument Overview
`• Two main points:
`
`– Patent Owner has not proved a date of invention
`earlier than the prior art references
`
`– The prior art shows both of two “key” features of
`the claims (characterized as key by Patent Owner)
`•
`direct entry method of matching remote to appliances
`of different manufacturers, and
`assigning a command macro to a macro pushbutton
`
`•
`
`2
`
`
`
`Earliest Priority and Prior Art Dates
`• Earliest Possible Priority date
`– ‘067 Patent priority date:
`Oct. 14, 1987
`
`• Prior Art Dates
`– CORE:
`September 1, 1987*
`•
`(*Board Decision Institution of IPR, paper 13 at p.13)
`– Evans:
`June 25, 1987
`– Wozniak:
`June 23, 1987
`– Magnavox:
`April 9, 1987
`– Rumbolt:
`November 20, 1985**
`•
`(**Patent Owner is not attempting to antedate Rumbolt)
`
`3
`
`
`
`Reduction to Practice Proof is
`Inadequate
`• Patent Owner’s reduction to practice proof fails for several
`reasons:
`– All evidence comes from co‐inventors – no independent
`corroboration (Paper 21, pg. 1)
`
`– No specific dates or indication of features/differences between
`three prototypes referenced by co‐inventor Ellis (Id., pg. 3)
`
`– No evidence of testing (Id., pg. 4)
`
`– Patented invention was admitted to be primarily software‐
`based, yet the vast majority of Patent Owner’s evidence is
`directed to hardware (e.g., schematics, photos of units, PCB
`artwork, etc.) (Ex. 1015, pg. 57)
`
`4
`
`
`
`No Independent Corroborating
`Evidence
`• All evidence relied upon to prove reduction to practice was
`attached to co‐inventor Ellis’ declaration
`
`– Much of the documentary evidence was actually produced by
`Darbee – another co‐inventor (Petitioner’s Reply to Patent
`Owner’s Response (Paper 21), pg. 2)
`
`– In order to establish an actual reduction to practice, an
`inventor's testimony must be corroborated by independent
`evidence. Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir.
`1998); Mahurkar v. C.R. Bard Inc, 79 F.3d 1572 (Fed. Cir. 1996)
`
`– No independent evidence to corroborate statements in Ellis’
`declaration
`
`5
`
`
`
`Details of Alleged Reduction to
`Practice are Vague at Best
`
`•
`
`Allegations regarding reduction to practice in Ellis’ declaration are vague as to time
`– “First” prototype built sometime in fall 1986 (Ex. 2005, para. 15)
`– “Development” prototype built sometime in winter 1986‐87 (Id., para. 17)
`– “Pre‐production” model built sometime in March/April 1987 (Id., para. 30)
`
`• No discussion of details of the prototypes or their differences (Paper 21, pg. 3)
`
`•
`
`According to Ellis, two “key” features of patent are (1) direct entry method of matching
`remote to appliances of different manufacturers, and (2) assigning a command macro
`to a macro pushbutton (Ex. 2005, para. 7)
`– As to when direct entry was first incorporated into a working prototype, Ellis
`testified “It had to be early on, but I don’t have a specific date” (Paper 21, pg. 4; Ex.
`1015, pgs. 58:22 to 59:5)
`– As to when assigning a macro to a macro pushbutton was first incorporated into a
`working prototype , Ellis testified “Again, I don’t know for sure.” (Paper 21., pg. 4;
`Ex. 1015, pgs. 58:22 to 59:5)
`
`6
`
`
`
`No Evidence that Prototypes were Tested and
`Worked for their Intended Purpose
`• Corroboration of the existence of the device itself
`is not sufficient to establish reduction to practice.
`It is also necessary to corroborate that the device
`worked for its intended purpose. In re Garner,
`508 F.3d 1376, 1381 (Fed. Cir. 2007)
`
`• No independent corroborating evidence of co‐
`inventor Ellis’ bald assertion that invention
`worked for its intended purpose (Paper 21, pg. 5)
`
`7
`
`
`
`Only One Piece of Evidence Relates to
`Software
`• Patented invention is software‐based (Ex. 1015,
`pg. 57)
`
`• Only evidence of development/existence of
`software is printout of source code dated April
`30, 1987
`– Even if all evidence re hardware was found to be
`credible and Board ignored lack of any proof of
`testing, reduction to practice cannot be any earlier
`than date of software (April 30, 1987) (Paper 21, pg. 6)
`• Unpatentability of claims 1, 3, 4 and 6 based on combination
`of Rumbolt and Magnavox would therefore stand
`
`8
`
`
`
`Patent Owner’s “Key” Features of Directly
`Identifying and Macro Pushbutton
`
`(Ex. 1001, 21:14‐37)
`
`9
`
`
`
`Claim Construction
`
`– The Patent is expired
`• The District Court construed the claims with a Markman order
`
`– In its Response, Patent Owner advocates for a special definition of “a
`library of codes and data” to mean “a table programmed into the
`remote control, the table comprising a variety of command codes
`corresponding to particular appliances of different manufacturers.”
`(Paper 18, pg. 15)
`• Patent Owner raised this for the first time after the Board’s Institution in an
`attempt to avoid “learning remotes” and negate the Board’s findings
`– Petitioner disagrees – it should not matter how the codes are
`programmed into the remote (Paper 21, pgs. 12‐13)
`• Patent Owner’s new construction is not supported by anything the District
`Court found in its Markman Order and also would be an end run around the
`Board’s prior determination
`
`10
`
`
`
`Rumbolt and Magnavox Show “Key”
`Features
`• Rumbolt has ability to assign subset of codes
`to a macro pushbutton (“command chaining”)
`(Ex. 1002, 1:61 – 2:2; Paper 1, pg. 17)
`
`• Magnavox shows use of 36‐button universal
`remote control to directly identify appliance
`to be matched (Ex. 1006, pg. 2)
`
`11
`
`
`
`Magnavox
`
`Ex. 1006, pg. 2
`
`12
`
`
`
`Substituting Pushbuttons for DIP
`Switches Is Obvious to POSITA
`
`• Use of pushbuttons rather than DIP switches would be much more user‐friendly
`(Paper 21, pg. 9)
`
`•
`
`Contrary to Patent Owner’s assertion, use of RAM (normally utilized with
`pushbutton devices) not uncommon as of late 1980s (Paper 21, pg. 10)
`
`• No evidence that use of RAM rather than DIP switches would have been more
`expensive (Id.)
`
`•
`
`Patent Owner’s assertion that substantial changes to software would be needed is
`unsupported (Id., pg. 11)
`
`13
`
`
`
`Evans
`
`• Patent Owner’s main attack on Evans is that it
`does not teach a “library of codes and data”
`because Evans is a “learning” remote (Paper
`21, pg. 12)
`
`• However, nothing in patent claims is directed
`to process of how codes are initially loaded
`into remote (Id.)
`
`14
`
`
`
`Wozniak and CORE Show Both “Key”
`Features
`• Patent Owner does not dispute that Wozniak/CORE teaches use of
`a macro pushbutton
`
`• Patent Owner’s argument that Wozniak/CORE describes a
`“learning” remote is both factually incorrect and legally irrelevant
`(for same reasons as Evans) (Paper 21, pg. 13)
`– CORE manual clearly describes that remote comes with pre‐stored
`codes and can also “learn” new ones
`
`• Fact that CORE uses a “page” structure does not mean it cannot
`“directly identify” appliances to be matched (Paper 21, pg. 15)
`– An appliance of a particular manufacturer is identified by pressing the
`“Page” key followed by the appropriate number (e.g., “Page” and “5”
`might match the remote to a Sony TV)
`
`15
`
`
`
`Certificate of Service
`
`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) on counsel
`
`of record for the Patent Owner by email as authorized by the Patent Owner at the
`
`following addresses:
`
`jarosikg@gtlaw.com; maierse@gtlaw.com; and chiipmail@gtlaw.com
`
`
`
`
`
`
`
`Date _______________ By _____________________________________
`
`
`
`
`Timothy E. Bianchi
`
`
`
`
`Reg. No. 39,610
`
`
`Respectfully submitted,
`
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`P.O. Box 2938
`Minneapolis, MN 55402
`(612) 373-6912
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