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
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.107
`
`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
`30th day of April, 2013
`
`/Cynthia Tapia/
`By:
` Cynthia Tapia
`
`

`

`IPR2013-00127
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................1
`
`II. DATE OF INVENTION...................................................................................2
`
`III. CLAIM CONSTRUCTION..............................................................................4
`
`IV. PATENT OWNER’S RESPONSE TO PETITIONER’S INVALIDITY
`ARGUMENTS..................................................................................................7
`
`A. Rumbolt ‘511 in View of Magnavox ...............................................................7
`
`1. The USPTO Already Expressly Considered Rumbolt ‘511 and Magnavox
`in Allowing Claims 1-6.................................................................................7
`
`2. Magnavox Is Not Prior Art to the ‘067 Patent..............................................8
`
`3. Rumbolt ‘511 Alone Does Not Render Claims 1-6 Obvious .......................8
`
`4. The Combination of Rumbolt ‘511 and Magnavox Does Not Render
`Claims 1-6 Obvious.......................................................................................9
`
`B. Rumbolt ‘511 in View of Magnavox in Further View of Evans ...................12
`
`1. Neither Magnavox nor Evans Is Prior Art to the ‘067 Patent.....................12
`
`2. Rumbolt ‘511 Alone Does Not Render Claims 1-6 Obvious .....................12
`
`3. The Combination of Rumbolt ‘511, Magnavox and Evans Does Not
`Render Claims 1-6 Obvious........................................................................13
`
`C. Wozniak in View of CORE............................................................................14
`
`1. The USPTO Already Expressly Considered Wozniak and CORE in
`Allowing Claims 1-6 ...................................................................................14
`
`2. CORE Is Not Prior Art to the ‘067 Patent ..................................................15
`
`3. Wozniak Is Not Prior Art to the ‘067 Patent...............................................17
`
`4. Wozniak Alone Does Not Render Claims 1-6 Obvious .............................17
`
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`IPR2013-00127
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`5. The Combination of Wozniak and CORE Does Not Render Claims 1-6
`Obvious .......................................................................................................20
`
`D. Rumbolt ‘359 in View of CORE....................................................................21
`
`1. The USPTO Already Expressly Considered the Exact Same Combination
`of Rumbolt ‘359 in View of CORE in Allowing Claims 1-6 .....................21
`
`2. CORE Is Not Prior Art to the ‘067 Patent ..................................................23
`
`3. Rumbolt ‘359 Alone Does Not Render Claims 1-6 Obvious .....................23
`
`4. The Combination of Rumbolt ‘359 and CORE Does Not Render Claims
`1-6 Obvious.................................................................................................25
`
`V.
`
`THE BOARD SHOULD DENY THE AMENDED PETITION IN THE
`INTEREST OF JUDICIAL ECONOMY .......................................................26
`
`VI. CONCLUSION...............................................................................................27
`
`ii
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`IPR2013-00127
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`I.
`
`INTRODUCTION
`In its Amended Petition for Inter Partes Review of U.S. Patent No.
`
`6,587,067 (“Amended Petition”), Petitioner alleges that U.S. Patent No. 6,587,067
`
`(“‘067 patent”) is rendered obvious by four different combinations of prior art: 1)
`
`U.S. Patent No. 4,774,511 to Rumbolt et al (“Rumbolt ‘511”) in view of PR
`
`Newswire (April 9, 1987), Magnavox unveils Total Remote Tuning System and
`
`second generation Universal Remote Control (“Magnavox”); 2) Rumbolt ‘511 in
`
`view of Magnavox in further view of U.S. Patent No. 4,825,200 to Evans et al
`
`(“Evans”); 3) U.S. Patent No. 4,918,439 to Wozniak et al (“Wozniak”) in view of a
`
`1987 “CORE Reference Manual” (“CORE”); and 4) U.S. Patent No. 4,703,359 to
`
`Rumbolt et al (“Rumbolt ‘359”). The Board should decline to institute inter partes
`
`review proceedings based on each of the above grounds, because each suffers from
`
`one or more fatal defects. For example, one of Petitioner’s bases is simply an
`
`attempt to re-raise the exact same combination of references over which the
`
`USPTO previously granted Claims 1-6 of the ‘067 patent. Further, all four of
`
`Petitioner’s bases rely upon one or more references that are not prior art to the ‘067
`
`patent. Finally, even ignoring these fatal defects, each combination upon which
`
`Petitioner attempts to rely fails to teach or suggest at least one limitation of each of
`
`Claims 1-6 of the ‘067 patent.
`
`1
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`

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`IPR2013-00127
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`II.
`
`DATE OF INVENTION
`
`Petitioner alleges invalidity based on a number of references that
`
`purportedly qualify as prior art under 35 U.S.C. §§ 102(a) and/or 102(e). As a
`
`threshold matter, a reference cannot qualify as prior art under either of those
`
`sections if the reference was not published or filed (in the case of a U.S. patent
`
`application) prior to the date of invention for the subject matter of Claims 1-6 of
`
`the ‘067 patent, which in this case is February 16, 1987. 35 U.S.C. §§ 102(a) and
`
`102(e).
`
`During prosecution of U.S. Application Serial No. 07/586,957—the great,
`
`great grandparent application to the ‘067 patent—Patent Owner submitted a
`
`Declaration Under Rule 37 CFR 1.131 by named inventor Paul Darbee (“Darbee
`
`Declaration”). See generally Ex. 2002.1 In that Declaration, Mr. Darbee explains
`
`that he first developed a prototype of the “Homer Control Unit,” or “HCU,”2 in the
`
`fall/winter of 1986 and that several more prototypes and production models were
`
`built between January 1987 and June 1987. Ex. 2002 at 1-2. In support of his
`
`Declaration, Mr. Darbee attached, amongst other documents, various revisions of
`
`the HCU’s user manual, including Revision 1.1 to the HCU Manual
`
`
`1 Because the Darbee Declaration is part of the ‘067 patent’s intrinsic record, through a claim of
`priority, it is not “new testimonial evidence.” See 37 C.F.R. § 42.106(c). However, to the extent
`the Board deems otherwise, Patent Owner hereby requests that the Board authorize Patent
`Owner’s submission of the Darbee Declaration, instanter.
`
`2 The inventors sometimes also referred to this device as “Uni-Com.” Ex. 2004 at 2.
`
`2
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`

`

`IPR2013-00127
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`Documentation (“Revision 1.1”), Revision 1.2 to the Homer Specifications
`
`(“Revision 1.2”) and a Review Copy of the User’s Manual (“Review Copy”). See
`
`generally Ex. 2002 at 11-35 and 41-56.
`
`According to the Revision Notes found at the beginning of Revision 1.2,
`
`Revision 1.1 was created on February 16, 1987, and Revision 1.2 was created on
`
`March 8, 1987. Ex. 2002 at 19-20. Revision 1.1 and Revision 1.2 each disclose
`
`that the HCU could be matched to a plurality of appliances via “Direct Library
`
`Entry,” wherein the user enters “a number of digits” that “will specify which
`
`library to use” with the target appliance. Ex. 2002 at 16 and 27. Revision 1.1 and
`
`Revision 1.2 each also disclose that both standard and custom macros may be
`
`assigned to a macro pushbutton (e.g. 0-9 or A-H). Ex. 2002 at 15-16, 26-27.
`
`The Review Copy was created on June 8, 1987. Ex. 2002 at 41. The
`
`Review Copy discloses that the HCU could be matched to a plurality of appliances
`
`via “Quick-Match,” wherein the user enters a code comprising a series of Rs and
`
`Gs with the CH+ and CH- keys in order to directly identify the appliance to which
`
`the HCU is to be matched. Ex. 2002 at 52-53. The Review Copy also discloses
`
`that macros (now referred to as “DO Commands”) may be assigned to a macro
`
`pushbutton (e.g. Do1). Ex. 2002 at 49-51.
`
`Thus, each of Revision 1.1, Revision 1.2 and the Review Copy, together
`
`with the Darbee Declaration, demonstrates that the named inventors conceived of
`
`3
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`

`

`IPR2013-00127
`
`the inventions of Claims 1-6 of the ‘067 patent and reduced them to practice by or
`
`before their respective creation dates. Accordingly, Claims 1-6 of the ‘067 patent
`
`are entitled to a date of invention of at least February 16, 1987.
`
`III. CLAIM CONSTRUCTION
`
`At the outset, Patent Owner agrees with Petitioner that since the ‘067 patent
`
`is expired, its claims should be construed under the standard set forth in Phillips v.
`
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). MPEP § 2258. Indeed, as Petitioner
`
`correctly points outs, during the reexamination of the ‘067 patent, which occurred
`
`after the ‘067 patent’s expiration, the Board already construed the claim term
`
`“codes” in accordance with Phillips. Ex. 1009 at 24-26.
`
`Patent Owner disagrees, however, with Petitioner’s over-simplification of
`
`Phillips. Phillips does not merely stand for the unremarkable position that claim
`
`terms should take on their ordinary and customary meaning as one of ordinary skill
`
`in the art would have understood them. Paper No. 6 at 12. Rather, the Federal
`
`Circuit in Phillips clarified that the claim terms should be given their ordinary and
`
`customary meaning to a person of ordinary skill in the art in question, at the time
`
`of the invention, in the context of the surrounding claim terms, the specification
`
`and the prosecution history. Phillips, 415 F.3d at 1312-13.
`
`Given that Phillips sets forth the operative claim construction standard, it is
`
`curious that Petitioner did not address, much less bring to the Board’s attention, the
`
`4
`
`

`

`IPR2013-00127
`
`fact that five days before Petitioner submitted its Amended Petition for Inter
`
`Partes Review, US. District Judge Andrew J. Guilford of the Central District of
`
`California issued his Claim Construction Order in Civil Action No. 8: 12-cv-00329
`
`(“California Litigation”), further construing the claims of the ‘067 under the
`
`Phillips standard. BX. 2001. Specifically, Judge Guilford construed certain
`
`limitations of the ‘067 patent as follows:
`
`“pushbuttons of the keyboard being activated
`
`Pushbuttons are pressed to
`
`to directly identify each of the plurality of
`
`enter codes that directly
`
`different home appliances of different
`
`identify each particular home
`
`manufactures to which the universal remote
`
`appliance to which the
`
`control is to be matched”
`
`universal remote control is to
`
`(claim 1)
`
`be matched
`
`to be matched
`
`“instructions further perform the step of using
`
`instructions further perform
`
`activation of one or more of the pushbuttons of the step of using codes entered
`
`the keyboard to directly identify each of the
`
`through pushbuttons that
`
`plurality of different home appliances of
`
`directly identify each
`
`different manufacturers to which the universal
`
`particular home appliance to
`
`remote control is to be matched”
`
`which the universal control is
`
`(claim 3)
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`IPR2013-00127
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`“using activation of one or more pushbuttons
`
`using codes entered through
`
`of the keyboard to directly identify each of the
`
`pushbuttons that directly
`
`plurality of different home appliances of
`
`identify each particular home
`
`be matched
`
`different manufacturers to which the universal
`
`appliance to which the
`
`remote control is to be matched”
`
`universal remote control is to
`
`(claim 6)
`
`Ex. 2001 at 34-35. In so construing the above claim terms, Judge Guilford
`
`specifically noted that the “step-and-set” method of matching a remote control to a
`
`target device “does not involve ‘direct identification’ of the device.” Id. at 30.
`
`Under the step-and-set method, the user selects the type of device to which he or
`
`she would like to match the remote, tests the remote, and if the device does not
`
`respond correctly, presses a button to set the remote to send a different set of codes
`
`and repeats the foregoing process
`
`Because Judge Guilford has already thoroughly and properly construed the
`
`above claim terms in accordance with Phillips, and in order to avoid inconsistent
`
`rulings across multiple jurisdictions, Patent Owner respectfully submits that the
`
`Board should adopt Judge Guilford’s above constructions.
`
`

`

`IPR2013-00127
`
`IV. PATENT OWNER’S RESPONSE TO PETITIONER’S INVALIDITY
`ARGUMENTS
`
`Each of Petitioner’s four alleged grounds for invalidity suffers from one or
`
`more fatal defects, such that the Board should not grant the Amended Petition.
`
`A.
`
`RUMBOLT ‘511 IN VIEW OF MAGNAVOX
`
`1.
`
`The USPTO Already Expressly Considered Rumbolt ‘511
`and Magnavox in Allowing Claims 1-6
`
`The UPSTO considered Rumbolt ‘511 during prosecution of the ‘067 patent
`
`and, presumably, deemed it either less relevant or cumulative of other art also
`
`being considered. Ex. 2003 at 23; Ex. 1008 at 64. Patent Owner further notes that
`
`the Examiner did expressly cite Rumbolt ‘511’s CIP child patent, Rumbolt ‘359, in
`
`the very same office action that found allowable subject matter in the ‘067 patent.
`
`Ex. 1008 at 25-26. Because the expressly cited Rumbolt ‘359 is a CIP of Rumbolt
`
`‘511, and by definition includes additional disclosure beyond that of Rumbolt
`
`‘511, it follows that Rumbolt ‘511 is at best cumulative of Rumbolt ‘359 and at
`
`worst a lesser disclosure. In either case, the USPTO allowed Claims 1-6 in view of
`
`the information disclosed in Rumbolt ‘511. Thus, while Patent Owner agrees that
`
`the combination of Rumbolt ‘511 and Magnavox were not cited in a rejection
`
`during prosecution of the ‘067 patent, the Board should give deference to the
`
`
`3 Patent Owner is re-submitting a copy of the ‘067 patent because the version Petitioner supplied,
`Exhibit 1001, did not include the associated Certificate of Correction nor the associated Ex Parte
`Reexamination Certificate.
`
`7
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`

`

`IPR2013-00127
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`USPTO’s prior determination of allowability, having considered Rumbolt ‘511 and
`
`having considered and expressly cited its child, Rumbolt ‘359.
`
`2. Magnavox Is Not Prior Art to the ‘067 Patent
`
`Magnavox is not prior art to the ‘067 patent because it did not publish prior
`
`to the invention of the subject matter of Claims 1-6 by the named inventors.
`
`Magnavox bears a publication date of April 9, 1987. 35 U.S.C. § 102(a). As
`
`discussed in greater detail in Section II, supra, the Darbee Declaration, and
`
`Revision 1.1 and 1.2 in particular, confirm that the named inventors had conceived
`
`and reduced to practice the subject matter of Claims 1-6 prior to April 9, 1987.
`
`Thus, Magnavox is not prior art to the ‘067 patent.
`
`3.
`
`Rumbolt ‘511 Alone Does Not Render Claims 1-6 Obvious
`
`As discussed above, Magnavox is not prior art, and therefore cannot be
`
`combined with Rumbolt ‘511 to render Claims 1-6 obvious. Considering Rumbolt
`
`‘511 on its own, Petitioner concedes that Rumbolt ‘511 does not teach or suggest
`
`using activation of pushbuttons of a keyboard to directly identify each of a
`
`plurality of different home appliances of different manufacturers to which the
`
`remote control is to be matched, i.e. using codes entered through pushbuttons that
`
`directly identify each particular home appliance to which the remote control is to
`
`be matched. See Ex. 2001 at 34-35. Rather, the remote control of Rumbolt ‘511 is
`
`configured by setting a series of DIP switches 30A and 30B, which are neither a)
`
`8
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`

`

`IPR2013-00127
`
`pushbuttons nor b) part of the remote control’s keyboard 18. Ex. 1002 at col. 3:5-7
`
`and Fig. 1.
`
`Accordingly, Petitioner has failed to demonstrate a reasonable likelihood
`
`that any of Claims 1-6 are rendered obvious by Rumbolt ‘511, and the Board
`
`should deny Petitioner’s request for inter partes review on that basis.
`
`4.
`
`The Combination of Rumbolt ‘511 and Magnavox Does Not
`Render Claims 1-6 Obvious
`
`Even assuming that the Board considers Magnavox to be prior art for the
`
`purposes of these proceedings (which it is not), the combination of Rumbolt ‘511
`
`and Magnavox still does not render Claims 1-6 obvious. As discussed in Section
`
`IV.A.3, supra, Rumbolt ‘511 fails to teach or suggest “the pushbuttons of the
`
`keyboard being activated to directly identify each of the plurality of different home
`
`appliances of different manufacturers to which the universal remote control is to be
`
`matched,” as recited in Claims 1, 2, 4 and 5, or “using activation of one or more
`
`pushbuttons of the keyboard to match the universal remote control to the plurality
`
`of different home appliances of different manufacturers,” as recited in Claims 3
`
`and 6. Magnavox fails to remedy these shortcomings of Rumbolt ‘511.
`
`Petitioner’s allegation that “Magnavox teaches directly identifying the home
`
`appliances to be controlled by the remote control via entering a code via
`
`pushbuttons of the keyboard” takes serious liberties with Magnavox and reads in
`
`disclosure where there simply is none. Magnavox’s entire description of how the
`
`9
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`

`IPR2013-00127
`
`disclosed remote control is programmed falls within a single, four-sentence
`
`paragraph, the entirety of which is reproduced below:
`
`While the new 36-button Universal Remote is more technologically
`
`advanced than its predecessor, the identification process has been
`
`simplified. Each VCR and cable brand is listed in the front of the
`
`operating manual with an assigned number. For instance, GE is 01,
`
`RCA is 03, Zenith is 15. To identify a particular VCR, a viewer
`
`simply presses the REC button on the remote, presses the on/off
`
`button on the VCE or cable box and enters the appropriate code.
`
`Ex. 1006 at 2 (emphasis added). Significantly, nowhere in the above-quoted
`
`passage is there any disclosure of how (e.g. via DIP switches, pushbuttons, etc.) the
`
`viewer “enters the appropriate code.” Petitioner’s suggestion to the contrary is
`
`pure speculation. Accordingly, neither Rumbolt ‘511 nor Magnavox, nor their
`
`combination, teaches or suggests “the pushbuttons of the keyboard being activated
`
`to directly identify each of the plurality of different home appliances of different
`
`manufacturers to which the universal remote control is to be matched,” as recited
`
`in Claims 1, 2, 4 and 5, or “using activation of one or more pushbuttons of the
`
`keyboard to match the universal remote control to the plurality of different home
`
`appliances of different manufacturers,” as recited in Claims 3 and 6.
`
`10
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`IPR2013-00127
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`Additionally, Rumbolt ‘511 and Magnavox, alone or in combination, fail to
`
`teach or suggest “using activation of one or more pushbuttons of the keyboard to
`
`assign the subset of the selected codes and data from the library to the macro
`
`pushbutton,” as recited in Claims 2 and 5. Specifically, while Rumbolt ‘511
`
`discloses what it calls “command chaining,” whereby user selection of a VCR
`
`“play” command automatically triggers the remote to switch the associated
`
`television to the channel to be used for display and then set the associated VCR to
`
`play mode, Rumbolt ‘511 also discloses that the command chain is a “permanent
`
`association” of operational commands. Ex. 1002 at cols. 1:61-2:2 (emphasis
`
`added). In other words, the operational commands of the Rumbolt ‘511 command
`
`chains are not assigned through the activation of pushbuttons; they are
`
`predetermined and fixed. Ex. 1002 at cols. 1:61-2:2, 4:66-5:19, Fig. 3C.4
`
`Accordingly, Petitioner has failed to demonstrate a reasonable likelihood
`
`that any of Claims 1-6 are rendered obvious by Rumbolt ‘511 in view of
`
`Magnavox, and the Board should deny Petitioner’s request for inter partes review
`
`on that basis.
`
`
`4 Petitioner’s allegations as to this claim limitation, which are conclusory at best, confuse the use
`of pushbuttons to initiate a command chain with the use of pushbuttons to assign a subset of
`selected codes and data to a macro pushbutton. Paper No. 6 at 26. While Rumbolt ‘511
`discloses the former, and only the former, Claims 2 and 5 of the ‘067 patent claim the latter.
`
`11
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`IPR2013-00127
`
`B.
`
`RUMBOLT ‘511 IN VIEW OF MAGNAVOX IN FURTHER VIEW OF
`EVANS
`
`1.
`
`Neither Magnavox nor Evans Is Prior Art to the ‘067 Patent
`
`Magnavox is not prior art to the ‘067 patent, for the reasons discussed in
`
`Section IV.A.2, supra.
`
`Evans is not prior art because its filing date falls after the invention date of
`
`the subject matter of Claims 1-6 by the named inventors. 35 U.S.C. § 102(e).
`
`Evans bears a filing date of June 25, 1987. As discussed in greater detail in
`
`Section II, supra, the Darbee Declaration, and Revision 1.1, Revision 1.2 and the
`
`Review Copy in particular, confirm that the named inventors conceived and
`
`reduced to practice the subject matter of Claims 1-6 prior to June 25, 1987. Thus,
`
`Evans is not prior art to the ‘067 patent.
`
`2.
`
`Rumbolt ‘511 Alone Does Not Render Claims 1-6 Obvious
`
`As discussed above, Magnavox and Evans are not prior art, and therefore
`
`cannot be combined with Rumbolt ‘511 to render Claims 1-6 obvious. Further, for
`
`the reasons stated in Section IV.A.3, Rumbolt ‘511 alone does not render Claims
`
`1-6 obvious. Accordingly, Petitioner has failed to demonstrate a reasonable
`
`likelihood that any of Claims 1-6 are rendered obvious by Rumbolt ‘511, and the
`
`Board should deny Petitioner’s request for inter partes review on that basis.
`
`12
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`IPR2013-00127
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`3.
`
`The Combination of Rumbolt ‘511, Magnavox and Evans
`Does Not Render Claims 1-6 Obvious
`Even assuming arguendo that Magnavox and Evans are prior art to the ‘067
`
`patent, the combination of Rumbolt ‘511, Magnavox and Evans does not render
`
`Claims 106 obvious. Rumbolt ‘511 and Magnavox, alone or in combination, fail
`
`to teach or suggest “the pushbuttons of the keyboard being activated to directly
`
`identify each of the plurality of different home appliances of different
`
`manufacturers to which the universal remote control is to be matched,” as recited
`
`in Claims 1, 2, 4 and 5, or “using activation of one or more pushbuttons of the
`
`keyboard to match the universal remote control to the plurality of different home
`
`appliances of different manufacturers,” as recited in Claims 3 and 6. See Section
`
`IV.A.4, supra. Evans fails to overcome these shortcomings of Rumbolt ‘511 and
`
`Magnavox.
`
`As an initial matter, Petitioner has not alleged that Evans teaches or suggests
`
`the above limitations—and with good reason. The remote control of Evans cannot
`
`be matched to a particular appliance based on codes entered via pushbuttons.
`
`Rather, the remote control of Evans is a so-called “learning” remote control which
`
`must learn all codes and data by receiving infrared emissions from the source
`
`remote to be replaced. Ex. 1004 at cols. 2:44-59, 6:8-51. Thus, Rumbolt ‘511,
`
`Magnavox and Evans, alone or in combination, fail to teach or suggest the above
`
`referenced limitations.
`
`13
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`

`IPR2013-00127
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`Additionally, Rumbolt ‘511 and Magnavox, alone or in combination, fail to
`
`teach or suggest “using activation of one or more pushbuttons of the keyboard to
`
`assign the subset of the selected codes and data from the library to the macro
`
`pushbutton,” as recited in Claims 2 and 5. See Section IV.A.4, supra. Because
`
`Evans discloses a purely learning remote control that does not include any library
`
`of codes and data, it follows that the pushbuttons of the Evans remote cannot be
`
`used to assign a subset of selected codes and data from a library to a macro
`
`pushbutton.
`
`Accordingly, Petitioner has failed to demonstrate a reasonable likelihood
`
`that any of Claims 1, 2, 4 and 5 are rendered obvious by Rumbolt ‘511 in view of
`
`Magnavox in further view of Evans, and the Board should deny Petitioner’s
`
`request for inter partes review on that basis.
`
`C. WOZNIAK IN VIEW OF CORE
`
`1.
`
`The USPTO Already Expressly Considered Wozniak and
`CORE in Allowing Claims 1-6
`
`The face of the ‘067 patent lists both Wozniak and CORE, and the Examiner
`
`considered them during the prosecution of the ‘067 patent. Ex. 2003 at 2; Ex. 1008
`
`at 29, 63. Indeed, the Examiner expressly cited CORE in a rejection dated January
`
`27, 2003. Ex. 1008 at 25-26. Therefore, Wozniak and CORE present no new
`
`issues for the Board to consider, and the Board should deny Petitioner’s request
`
`with respect to Wozniak and CORE on that basis alone.
`
`14
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`IPR2013-00127
`
`2.
`
`CORE Is Not Prior Art to the ‘067 Patent
`
`CORE is not prior art because there is no evidence of its availability prior to
`
`October 14, 1987, the priority date of the ‘067 patent. 35 U.S.C. 102(a). CORE
`
`bears a copyright date of 1987, without specifying a month of publication.
`
`Accordingly, the earliest possible publication date for this reference is December
`
`31, 1987. See Ex Parte Test.com Appellant and Patent Owner, Appeal No. 2009-
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`010023, 2010 WL 2802525, at *3 (BPAI July 15, 2010) (“Administrator Guide has
`
`a copyright of 1998, and thus available as prior art as of December 31, 1998. …
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`Student Manual has a copyright of 1998, and thus available as prior art as of
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`December 31, 1998.”); Fiber Optic Designs, Inc. and Holiday Creations, Inc.
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`Patent Owner, Appellant v. Seasonal Specialties, LLC, Requestor, Appeal No.
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`2011-007195, 2011 WL 3325780, at *9 (BPAI July 29, 2011) (rejecting
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`Examiner’s speculative position that reference with original copyright date of 1974
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`and August 21, 2000, “update” constituted prior art to patent having a priority date
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`of August 1998 and noting that Examiner improperly shifted burden to the
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`applicant to prove that relevant aspect of reference was first added in August 21,
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`2000 edition) (emphasis added) (quoting In re Lister, 583 F.3d 1307, 1317 (Fed.
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`Cir. 2009) (“We surely would not view the mere existence of the reference … as
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`prima facie evidence that it was available prior to the applicant’s critical date.”))).
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`Petitioner relies upon a vague reference in a three-paragraph Fortune
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`magazine article (“Whither Woz?”) to alleged sales of a “hand-sized electronic
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`device that allows all their home entertainment gear” called “CORE” as early as
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`September 1, 1987, to suggest that the CORE reference itself is entitled to that
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`same publication date. Assuming for the sake of argument that the Wither Woz?
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`article is accurate, it could only establish that a product called “CORE” first
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`shipped on September 1, 1987.5 And while Wither Woz? references a “100-page
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`user manual,” there is no evidence that that user manual is in fact the very same
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`document as the CORE reference—as opposed to, for example, some earlier
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`version of the CORE reference or some altogether different document. In other
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`words, Petitioner has not laid sufficient foundation to establish that CORE has a
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`publication date prior to October 14, 1987. Indeed, to conclude that CORE was
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`published on any date prior to December 31, 1987, would be pure speculation.
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`However, even if the Board were to accept Petitioner’s allegation that CORE
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`was published as early as September 1, 1987, CORE is still not prior art because it
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`was not published before the invention of the subject matter of Claims 1-6 by the
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`named inventors. The Darbee Declaration, and Revision 1.1, Revision 1.2 and the
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`Review Copy in particular, confirm that the named inventors had conceived and
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`5 To the extent Petitioner is relying upon alleged product sales themselves as prior art, Patent
`Owner notes that such “prior art” does not fall under the statutory scope of an inter partes review.
`35 U.S.C. § 311(b).
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`reduced to practice the subject matter of Claims 1-6 long before to September 1,
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`1987. See Section II, supra. Thus, for all the above reasons, CORE is not prior art.
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`3. Wozniak Is Not Prior Art to the ‘067 Patent
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`Wozniak is not prior art because it was not published before the invention of
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`the subject matter of Claims 1-6 by the named inventors. Specifically, Wozniak
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`bears an earliest possible priority date of June 23, 1987. As discussed in greater
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`detail in Section II, supra, the Darbee Declaration, and Revision 1.1, Revision 1.2
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`and the Review Copy in particular, demonstrate that the named inventors had
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`conceived and reduced to practice the subject matter of Claims 1-6 prior to June
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`23, 1987. Thus, Wozniak is not prior art to the ‘067 patent.
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`4. Wozniak Alone Does Not Render Claims 1-6 Obvious
`Assuming arguendo that Wozniak is prior art to the ‘067 patent, Wozniak
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`still does not render Claims 1-6 obvious. Specifically, the remote control of
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`Wozniak cannot be matched to a particular appliance based on codes entered via
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`pushbuttons. Rather, the below quoted passages of Wozniak make clear that, like
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`the remote control of Evans, the remote control of Wozniak is a learning remote
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`control which must learn all codes and data by receiving infrared emissions from
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`the source remote to be replaced.
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`Remote control device 10 can operate in a learning mode wherein
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`device 10 learns to emulate signals provided by various dedicated
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`IPR2013-00127
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`remote controllers designed to control specific associated appliances.
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`During the learning mode, a sensor within remote control device 10
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`receives a signal to be emulated (typically an infrared signal). Remote
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`control device 10 stores data (described below) indicative of the
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`characteristics of the received signal. Thereafter, remote control
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`device 10 is operated in an emulation mode, wherein a user causes
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`device 10 to use the stored data to reconstruct the received signal in
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`order to control an appliance.
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`Ex. 1003 at col. 3:5-16 (emphasis added).
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`Remote control device 10 includes a receiver which during the
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`learning mode, receives an infrared signal provided by a dedicated
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`remote controller, modulated in accordance with a technique such as
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`one of the techniques illustrated in FIGS. 5a to 5h. (In one
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`embodiment, the receiver comprises an infrared sensitive transistor
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`Q4 illustrated in FIG. 7a.) Remote control device 10 learns to emulate
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`the received signal, i.e. remote control device 10 learns to provide an
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`infrared signal or a set of infrared signals approximately identical to
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`the signals provided by the dedicated remote controller.
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`Ex. 1003 at cols. 2:67-3:9 (emphasis added). Indeed, Wozniak dedicates two
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`columns of his specification to “OPERATION OF DEVICE 10 WHEN DEVICE
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`10 LEARNS TO EMULATE A SIGNAL.” Ex. 1003 at cols. 10:8-11:68.
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`Importantly, Wozniak nowhere discloses any other method of matching the
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`disclosed remote control to a device to be controlled. Thus, Wozniak fails to teach
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`or suggest “the pushbuttons of the keyboard being activated to directly identify
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`each of the plurality of different home appliances of different manufacturers to
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`which the universal remote control is to be matched,” as recited in Claims 1, 2, 4
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`and 5, or “using activation of one or more pushbuttons of the keyboard to match
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`the universal remote control to the plurality of different home appliances of
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`different manufacturers,” as recited in Claims 3 and 6.
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`Because Wozniak discloses a purely learning remote control that, by its
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`nature, does not include any library of codes and data, it follows that the
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`pushbuttons of the Wozniak remote cannot be used to assign a subset of selected
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`codes and data from a library to a macro pushbutton. Thus, Wozniak also fails to
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`teach or suggest “using activation of one or more pushbuttons of the keyboard to
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`assign the subset of the selected codes and data from the library to the macro
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`pushbutton,” as recited in Claims 2 and 5.
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`Accordingly, Petitioner has failed to demonstrate a reasonable likelihood
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`that any of Claims 1-6 are rendered obvious by Wozniak, and the Board should
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`deny Petitioner’s request for inter partes review on that basis.
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`5.
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`The Combination of Wozniak