Trials@uspto.gov Paper 32
`571-272-7822 Entered: 6 May 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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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
`Patent 6,587,067
`____________
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`
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`Before: SALLY C. MEDLEY, HOWARD B. BLANKENSHIP, and
`WILLIAM V. SAINDON, Administrative Patent Judges.
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`RECORD OF ORAL HEARING
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`TIMOTHY E. BIANCHI, ESQUIRE
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`Schwegman, Lundberg, Woessner
`1600 TCF Tower, 121 South 8th Street
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`Minneapolis, Minnesota 55402
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`571-272-7822 Entered: 6 May 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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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
`Patent 6,587,067
`____________
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`
`
`Before: SALLY C. MEDLEY, HOWARD B. BLANKENSHIP, and
`WILLIAM V. SAINDON, Administrative Patent Judges.
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`RECORD OF ORAL HEARING
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`TIMOTHY E. BIANCHI, ESQUIRE
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`Schwegman, Lundberg, Woessner
`1600 TCF Tower, 121 South 8th Street
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`Minneapolis, Minnesota 55402
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`and
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`THOMAS C. REYNOLDS, ESQUIRE
`Schwegman Lundberg, Woessner
`150 Alamaden Boulevard, Suite 750
`San Jose, California 95113
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`Case No. IPR2013-00127
`Patent No. 6,587,067
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`ON BEHALF OF PATENT OWNER:
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`MICHAEL NICODEMA, ESQUIRE
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`Greenberg Traurig, LLP
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`200 Park Avenue
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`Florham Park, New Jersey 07932-0677
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`and
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`ERIC J. MAIERS, ESQUIRE
`Greenberg Traurig, LLP
`77 West Wacker Drive, Suite 2500
`Chicago, Illinois 60601
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`The above-entitled matter came on for hearing on Tuesday,
`April 8, 2014, commencing at 12:59 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Patent No. 6,587,067
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`JUDGE MEDLEY: Good afternoon. This is the hearing
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`for the IPR2013-00127 between Petitioner Universal Remote Control
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`and Patent Owner Universal Electronics, Incorporated.
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`At this time we would like the parties to please introduce
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`counsel starting with the Petitioner.
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`MR. BIANCHI: Your Honor, I'm Timothy Bianchi for
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`Universal Remote Control and this is my co-counsel, Thomas
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`Reynolds.
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`JUDGE MEDLEY: Okay. Mr. Bianchi, will you be
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`arguing today?
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`Owner?
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`MR. BIANCHI: Yes.
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`JUDGE MEDLEY: Thank you. And then for Patent
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`MR. NICODEMA: Good afternoon, Your Honor. Michael
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`Nicodema for UEI, along with my partner, Eric Maiers.
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`JUDGE MEDLEY: Mr. Nicodema, will you be arguing
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`today?
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`MR. NICODEMA: Yes, Your Honor. I will be presenting
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`UEI's main argument. Mr. Maiers will be arguing our pending motion
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`to exclude a portion of Dr. Herr's testimony.
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`JUDGE MEDLEY: Okay. Thank you. Each party will
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`have 30 minutes total time to present their arguments. Petitioner will
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`begin with the presentation of its case with regard to challenged
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`claims on which basis the Board instituted trial.
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`Thereafter, Patent Owner, you will respond to Petitioner's
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`presentation and then, Petitioner, you may reserve rebuttal time to
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`respond to Patent Owner's presentation.
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`Petitioner, you may begin and how much time would you
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`like to reserve, if any?
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`MR. BIANCHI: Your Honor, would you like paper copies
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`of the presentation for today?
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`JUDGE MEDLEY: Yes, please, if you -- you may
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`approach the bench. Thank you.
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`MR. BIANCHI: Your Honor, we would like to reserve 15
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`minutes for rebuttal. I'd also like to leave open the option that Mr.
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`Reynolds be allowed to argue on rebuttal, if necessary.
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`JUDGE MEDLEY: That's fine.
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`MR. BIANCHI: Okay.
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`JUDGE MEDLEY: You may proceed.
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`MR. BIANCHI: Thank you, Your Honor. I appreciate that.
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`In our case today we would like to drive home two major points about
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`the IPR. The first point that we'd like to make is that all through -- all
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`of the testimony that's been developed and all of the documents of
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`record, to this date Patent Owner still has not proved a date of
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`invention earlier than the prior art references, and we'll talk a little bit
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`more about those prior art references in the upcoming slides.
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`I'm referring now to slide/page number 2 of your materials.
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`So, in brief, what we're arguing is that the Patent Owner has not
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`produced evidence of the invention working for its intended purposes.
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`There are some very phaseal statements to that effect in the record,
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`but there is no evidence of testing.
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`The second point we would like to make is that the prior art
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`does show all of the key features as characterized by Patent Owner,
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`for example, the direct entry method of matching remote -- the remote
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`to appliances of different manufacturers and also the assigning a
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`command macro to a macro pushbutton.
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`I refer now to page 3 of the materials. What we put on this
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`page are some of the dates of interest, including the priority date for
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`the '067 patent, which was filed on October 14, 1987. There are also
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`relevant dates to the prior art that we have used in our petition and as
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`is instituted in this proceeding for trial.
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`And of those different references, I would just like to note
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`that at no time has the Patent Owner attempted to antedate the
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`Rumbolt reference, which is the last one listed there back to
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`November 20, 1985. I want to make that perfectly clear. We also
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`want to remind the Board that in its Institution Order that it attributed
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`to the CORE user manual, which is the first prior art reference listed
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`there, September 1, 1987 based on some additional publications in the
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`record.
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`At no time did Patent Owner also show -- attempt to show
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`conception and then diligence, so this is strictly a case of where Patent
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`Owner is asserting an actual reduction of practice prior to our prior art
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`references.
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`Moving on to page 4. So perhaps the most important
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`argument points are that in general what we are saying to the Board is
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`that the Patent Owner's reduction to practice proof fails for several
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`reasons. The first reason, all evidence essentially comes from
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`co-inventors. There's no independent corroboration of the evidence
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`asserted.
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`The second reason is that specific dates are lacking. We're
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`given very ambiguous ranges of dates in all of the materials. So the
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`dates are lacking and indication of features and differences between
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`the three prototypes referenced by Co-Inventor Ellis are lacking a
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`description of the differences.
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`As we stated earlier, there's also no evidence of testing,
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`which the Board expressly noted in its order instituting trial. And,
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`finally, we want to point out that the patented invention was
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`admittedly software-based, yet the vast majority of the exhibits
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`attached to Patent Owner's response include printed circuit board
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`information, things relating to the circuits that don't necessarily affect
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`the software.
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`In general, what happened here is that Patent Owner was
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`asked to provide evidence of testing and that it worked -- that the
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`design that was claimed worked for its intended purpose, but all we
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`have are some bald statements made by the Patent Owner -- their
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`expert, I'm sorry, by Patent Owner's expert in testimony by Ellis.
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`I'm referring now to page 5 of the slide deck. So let's talk
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`about independent corroborating evidence. All the evidence relied on
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`in this -- in Patent Owner's response relates to proving reduction to
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`practice based on Exhibits A through T, which are again largely
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`directed to the hardware, and then there's a declaration by Mr. Ellis,
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`Co-Inventor Ellis.
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`Much of that evidence the Board had already seen when it
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`instituted trial. For example, Patent Owner attempted to swear behind
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`the prior art references using a 131 declaration that was included in a
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`different related application. The Board expressly rejected that
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`approach because of the adjudicatorial nature of these proceedings
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`vis-à-vis examinatorial nature.
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`We believe the Board was correct to do that. Many of the
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`exhibits that are added after that were either prepared by co-inventors
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`or have a questionable origin based on the fact that the Co-Inventor
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`Ellis, who was deposed, did not have those documents in his
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`possession.
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`In order to establish an actual reduction to practice, an
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`inventor's testimony must be corroborated by independent evidence.
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`That independent evidence is largely lacking in this evidence
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`proffered by Patent Owner.
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`Moving on to slide number 6. The dates that Co-Inventor
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`Ellis provided in deposition and in his declaration are ambiguous.
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`The allegations regarding reduction to practice in his declaration are
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`vague as to time. For example, the first prototype built sometime in
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`the fall of 1986, the development prototype built sometime in the
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`winter of '86 to '87, pre-production model built sometime in March to
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`April 1987. Very little detail was given about these different
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`prototypes.
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`Now, Co-Inventor Ellis identified two key features of the
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`patent relating to direct entry method of matching a remote to
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`appliances of different manufacturers and assigning a command
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`macro to a macro pushbutton. As to when the direct entry was first
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`incorporated into the prototype, Ellis testified, It had to be early on,
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`but I don't have a specific date. As to when assigning a macro to
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`macro pushbutton was first incorporated to the working prototype,
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`Ellis testified, again, I don't know for sure.
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`Moving on to page number 7. So UEI failed to provide
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`evidence that the prototypes were tested and worked for their intended
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`purpose. Corroboration of an existence of a device itself is not
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`sufficient to establish reduction to practice. It is also necessary to
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`corroborate that the device worked for its intended purpose. And as a
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`result, UEI failed to prove that their software invention, which is what
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`Ellis testified to, is the nature of the subject matter to claims in the
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`patent challenge. The software invention was not shown to be tested
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`or that it worked for its intended purpose.
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`The only thing that Ellis stated is that it was suitable for its
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`intended purpose, but there was no corroborating other evidence other
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`than what he presented as Exhibits A through T, which as we said
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`earlier was generated largely by the inventors themselves.
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`Moving on to page number 8. Really, as we said earlier,
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`Co-Inventor Ellis admitted that the invention largely relates to
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`software. The only piece of evidence relating to software of detailed
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`nature is the software code listed in the exhibit. The patented
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`invention being software-based, it's very important for that exhibit to
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`show that the software was indeed whole and working.
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`Even if all the evidence regarding the hardware was found
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`to be credible and the Board ignored our request to consider the lack
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`of proof of testing, reduction to practice could not possibly be
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`attributed to a date earlier than April 30, 1987, which is the date of the
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`source code printout.
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`And in that case, if that were to be the case, we strongly
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`advocate that the Board consider our arguments that there is not
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`testing provided, which should that be the case, the unpatentability of
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`Claims 1, 3, 4 and 6 based on the combination of Rumbolt and
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`Magnavox would still stand.
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`I think it's important to note that the mere fact that software
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`existed on a certain date did not mean that the invention worked for its
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`intended purpose, so there may have been a revision of code, but that
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`the code was not complete, and hardware without software that has a
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`completed code is inoperable. The mere fact that modules were edited
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`on certain dates do not indicate that they were suitable for the
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`intended purpose or that they were complete.
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`Moving on to page number 9. So now turning to the second
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`part of the discussion today, Claim 1, what we did is we highlighted
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`the different portions of what Patent Owner attributed to be key
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`features. Firstly, the directly identified aspect and then the assigning
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`macro pushbutton aspect. I'm going to page 10 of the materials.
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`Just as a preliminary note, the patent has expired, so
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`amendments are not even possible in this situation and basically what
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`we have in claim construction is a Markman decision by the Court,
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`the parallel concurrent litigation. That Markman decision occurred
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`days after we submitted our original petition and we submitted a
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`supplemental petition per the request of the Board and under -- having
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`contacted the Board to indicate the situation, we were given the option
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`of either submitting the original petition as is with the indicated
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`changes or getting a new filing date and we opted for the former.
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`So in its response, Patent Owner advocates for a special
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`definition of library of codes and data to mean a table programmed
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`into the remote control, the table comprising a variety of command
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`codes corresponding to a particular appliance of different
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`manufacturers.
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`This was raised for the first time after the Board's
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`institution. We believe that this was an attempt to differentiate from
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`the prior art, because the Board had already decided in its order to
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`institute that the number of times that whether the codes were
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`pre-programmed or not was not required by the claim language itself.
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`It should not matter how the codes were programmed into the remote,
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`because the claims do not require a certain pre-programming step per
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`se.
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`I believe I'm coming close to the end of my 15 minutes,
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`Your Honor. Do you have the time remaining?
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`JUDGE MEDLEY: Yeah, one minute.
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`MR. BIANCHI: One minute. So just to summarize and
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`finish up the last few slides, we believe that the prior art was correctly
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`noted as -- by the Board as concluding the key features of the alleged
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`invention as deemed by Patent Owner. We believe that the prior art
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`references show obviousness of the claimed invention and we ask that
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`the Board cancel Claims 1 through 6 for obviousness under the
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`proffered grounds, and I will reserve the rest of my time for rebuttal.
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`JUDGE MEDLEY: Thank you.
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`Okay. Patent Owner.
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`MR. NICODEMA: Your Honor, does our 30 minutes
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`include the argument on our motion?
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`JUDGE MEDLEY: Yes.
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`MR. NICODEMA: It does?
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`JUDGE MEDLEY: Yes.
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`MR. MAIERS: May I approach?
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`JUDGE MEDLEY: Yes. Thank you.
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`Okay. So you have till 1:47.
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`MR. NICODEMA: Thank you, Your Honor.
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`Your Honor, there are three reasons why the Petitioner has
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`failed to carry its burden of proving Claims 1 through 6 of the '067
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`patent to be obvious. One is that we've shown through at least the
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`software code, which I will discuss, that the date of invention for
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`Claims 1 to 6 precedes all of Petitioner's prior art except Rumbolt.
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`And because of that, all of their combinations must fail.
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`Secondly, with respect to the combinations of prior art that
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`include Rumbolt and Magnavox, the disclosures of those references in
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`addition to the testimony of UEI's expert, Mr. Hayes, show that
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`Rumbolt teaches away from a combination where pushbuttons would
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`be used in place of the DIP switches that are disclosed in Rumbolt,
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`and, third, even though there was motivation in the art to combine the
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`references as proposed by the Petitioner, there would still be at least
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`one and sometimes two claim elements lacking.
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`Now, I'd like -- on the prior invention we submitted lots of
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`slides and I'm going to try to cut to the chase here, Your Honor.
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`Petitioner's own brief, and I believe Petitioner repeated this in his
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`argument just now, Petitioner's reply brief of page 7 says, if the Board
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`is inclined to consider the software code as evidence, then CORE,
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`Wozniak and Evans would be eliminated as prior art references.
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`Now, in making that statement, Petitioner relies upon the
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`date on the face of the software code, the April 30, 1987 date, but the
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`code itself shows that all the critical functions to the claims were
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`reduced to practice by March 24, 1987, which also would eliminate
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`Magnavox as prior art. And if that's the case, then all of the
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`Petitioner's combinations must fail, because we have demonstrated a
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`prior invention.
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`Now, on the issue of corroboration, Your Honor, it's UEI's
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`position that the Petitioner is attempting to hold us to an artificially
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`high standard, and if we look at slide 11 in our presentation, we have a
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`quotation from the Federal Circuit's decision in Price v. Symsek, and
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`that decision basically says, corroboration is not necessary to establish
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`what a physical exhibit before the Board includes, and in that case
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`documentary evidence was at issue.
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`Now, the Petitioner concedes that the software code
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`discloses all the critical limitations of the claims. They did not file
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`any objections, which I believe they were compelled to do, file
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`evidentiary objections on the admissibility of the software code.
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`JUDGE MEDLEY: Can you direct us to where they
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`concede that all the elements are shown in the source code?
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`MR. NICODEMA: Yes. We can look at -- we can go
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`through them slide by slide. Slide 18, we can begin with that.
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`JUDGE MEDLEY: No. I'm talking about in the record, in
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`the written record. I'm not so concerned about what your slides say.
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`I'm looking at where in their reply did they say we concede that they
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`--
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`MR. NICODEMA: Oh, yes.
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`JUDGE MEDLEY: That the source code includes every
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`element that's being claimed.
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`MR. NICODEMA: Page 7 of their reply. I'll read it to you,
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`Your Honor, and I think we have a slide on that, but I'll read it. Page
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`7 of their reply, the last full paragraph before II. It says, thus, the only
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`thing that is known for sure about the software that provided -- that
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`provided all the critical functionality, including the claimed direct
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`entry and macro command functions, is that a version of it existed as
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`of April 30, 1987, and they go on to say that if the Board were to
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`credit that source code, then three of the five prior art references
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`would be removed.
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`Now, when they make that statement, they can't just rely on
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`the April 30th date, because the document itself which includes many
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`comments describing what's going on there and which we have
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`indicated in our slides show that the critical functionality that the
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`Petitioner speaks of was actually reduced to practice by March 24,
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`1987. That would also eliminate Magnavox as prior art.
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`JUDGE MEDLEY: Could you focus on the evidence that
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`establishes that the source code worked for its intended purpose at end
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`of March of 1987?
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`MR. NICODEMA: I believe that the source code itself by
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`having all of those functionalities in there and all of the comments
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`indicating what the source code did and what the source code was that
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`shows that it worked for its intended purpose, I don't believe the
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`Petitioner has cited any cases to the effect that a source code is
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`insufficient to show that an invention worked for its intended purpose.
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`The source code is the thing that -- it wouldn't have come up with the
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`source code if they didn't have all the other things that we show in the
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`documentary evidence that preceded it, like the circuit boards and
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`things of that nature, the user manual.
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`JUDGE MEDLEY: I mean, I can have source code, but
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`unless I run it, I don't know that it's actually going to do what it says
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`it's going to do. So where is the proof in the record that the source
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`code did what it was supposed to do with respect to the claimed
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`invention?
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`MR. NICODEMA: I think the proof in the record, Your
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`Honor, if we go to the slides, if we go to slide 18 maybe, that's where
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`we start showing that.
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`JUDGE BLANKENSHIP: Where is this in the record?
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`MR. NICODEMA: The source code?
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`JUDGE BLANKENSHIP: Mapping the claim language to
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`the source code.
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`MR. NICODEMA: That is -- that comes from the inventor,
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`Mr. Ellis, but our position is that under the Price case the Board can
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`consider --
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`JUDGE BLANKENSHIP: So it's in Mr. Ellis' declaration?
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`MR. NICODEMA: Yes.
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`JUDGE BLANKENSHIP: What paragraph?
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`MR. NICODEMA: Oh, it's throughout his declaration,
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`Your Honor. The source code is Exhibit F to Mr. Ellis' declaration --
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`L, I'm sorry, and beginning at paragraph 34 of Mr. Ellis' declaration,
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`he begins his discussion of the source code, Exhibit L, and in that
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`paragraph -- in the preceding paragraphs he talks about the critical
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`functionality of the claims, the macro pushbutton and the direct entry
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`claim limitations.
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`The point is, Your Honor, that we're trying to make is that
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`even putting Mr. Ellis' declaration aside, under the Price case the
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`Board is entitled to consider the source code evidence for what it is
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`and what it discloses.
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`JUDGE MEDLEY: But we won't do that independently.
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`You have to have some kind of testimony to explain to the Board,
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`hey, this source code, this part of the source code equates with this
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`particular step in the claim. You can't just -- and we're not going to
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`independently look at the source code and try to figure it out on our
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`own, so that's what I think Judge Blankenship was trying to get at,
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`where is that explanation?
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`MR. NICODEMA: Well, the explanation is
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`Mr. Ellis' declaration.
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`JUDGE MEDLEY: Okay. So we need to look at that.
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`MR. NICODEMA: Now, Your Honor, if I may move on to
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`the substance of the prior art combinations themselves, first, the
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`combination of Rumbolt and Magnavox. When we look at the
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`combinations, I think we need to look at the declaration of Dr. Herr,
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`the Petitioner's expert. Because under KSR -- I mean, I think we all
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`agree here, because we both submitted expert testimony, that this is
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`not one of these simple inventions, the rare case where expert
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`testimony is not helpful or useful.
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`Now, if we look at Dr. Herr's declaration and we have this
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`in our slides, but I'll just summarize to save time, he makes conclusory
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`statements about why you could combine prior art references. He
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`doesn't say why you can combine them. He doesn't say that the
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`combination would work for the intended purpose of the claims. He
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`doesn't say -- he doesn't actually -- he doesn't use the California courts
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`claim construction, which is the construction that I believe both
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`parties agree that has to be used.
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`He says that he read the prosecution history in the patent
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`and he came up with some ordinary meaning construction, but he
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`doesn't tell us what it is, and actually on that point -- I think it's
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`paragraph 22 of his declaration -- he says that he studied the
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`prosecution history, but at his deposition he admitted that he'd never
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`seen it. He'd never read it. So when you have that kind of testimony
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`from an expert, it's our position that it's really unreliable to
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`demonstrate that the prior art reads on the claims.
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`Now, if we look at in contrast Mr. Hayes, UEI's expert, let's
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`take, for example, the combination of Rumbolt and Magnavox, he
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`gave detailed testimony on why Rumbolt would teach away. For
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`example, he says that, okay, Rumbolt uses DIP switches, inexpensive
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`DIP switches, to perform the direct identification step, but Rumbolt
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`also has pushbuttons on a keypad, but he uses them for a conventional
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`purpose, just to operate the remote, not to directly identify the
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`appliance itself, which is what the claim requires.
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`The Petitioner's expert, Mr. Herr, Dr. Herr, says that, well,
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`the person of ordinary skill would be motivated to combine Rumbolt
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`with Magnavox, which he says discloses the pushbuttons to decrease
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`cost. Well, Mr. Hayes disagrees and I believe his testimony is more
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`robust and authoritative on this issue.
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`For example, Mr. Hayes testified that DIP switches for
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`directly identifying an appliance, the memory use of that is primarily a
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`low cost ROM, whereas as if you use pushbuttons it would require a
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`more expensive RAM, and at the time of the '067 patent, most
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`microprocessors included a small amount of scratchpad RAM,
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`meaning a small amount of RAM and this was volatile, and any data
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`would be lost when you lose the power. So a key reason, Your
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`Honor, for using DIP switches was they're manually set and they
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`would preserve the stored identities of the appliances if the batteries
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`were removed or if they had gone bad.
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`Now, to address the problem with using pushbuttons, the
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`'067 patent discloses a large amount of RAM capable of storing all the
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`device identification codes. I believe, Your Honor, in the patent it
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`says that the device is infinitely upgradable because of this, and this
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`RAM is directly connected to a lithium backup battery, so that if the
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`regular batteries in the remote go bad or removed, the lithium backup
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`battery prevents the loss of all the data and the instructions in the
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`RAM memory. And the patent also discloses a backup capacitor. So
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`if you're going to remove the lithium battery for whatever reason,
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`you're not going to lose the instructions and the data stored in RAM.
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`Now, these additional features require coding. They require
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`electronic circuity. The lithium battery and the backup capacitor itself
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`costs money. It's going to increase the cost, not as Dr. Herr says
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`decrease the cost. So somebody skilled in the art would not be
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`Case No. IPR2013-00127
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`motivated to put pushbuttons in place of the DIP switches in Rumbolt,
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`because you'd only increase the cost.
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`And it's interesting, Your Honor, that the Rumbolt patent
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`itself at column 1, lines 43 to 44 says that his remote control is simple
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`to operate, reliable and relatively inexpensive. So Rumbolt himself
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`shows the state of the art, what people in the art at the time of the
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`invention were thinking in terms of what was simple and easy to
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`operate and less expensive. He thought his DIP switch invention fit
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`that category, so why would anybody skilled in the art try to replace
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`the DIP switches with pushbuttons that would only increase the cost?
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`Now, if we turn to Magnavox, again, Mr. Hayes' testimony
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`shows that that disclosure in Magnavox, that one paragraph
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`disclosure, is conclusory and vague. It doesn't necessarily and
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`inevitably disclose the use of pushbuttons. It could be DIP switches.
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`Indeed, Rumbolt discloses pushbuttons for a different
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`purpose, not direct entry, and uses DIP switches for direct entry, and
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`there's no disclosure in Magnavox of the backup lithium battery or the
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`capacitor or any of the software and electronics needed to
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`accommodate pushbuttons used for direct identification of appliances,
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`and Dr. Herr admits that Magnavox does not expressly disclose
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`pushbuttons for entering codes. He admitted that at his deposition.
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`And nowhere in his declaration does he say that it's
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`inherently disclosed, meaning that it would necessarily and inevitably
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`be disclosed. He doesn't do that. So, again, we're talking about a
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`failure of proof from their own expert. So even if one skilled in the
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`art did combine Rumbolt and Magnavox, you still wouldn't meet the
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`direct entry of the direct identity element of the claim. So it's our
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`position, Your Honor, that on the combination of Magnavox and
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`Rumbolt, Petitioner has not met its burden of proof of proving the
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`claims of the '067 patent obvious.
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`The second combination that they rely upon is Rumbolt,
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`Magnavox and Evans, and that is directed only to Claims 2 and 5.
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`Now, for the reasons that we set out in our brief and I just discussed,
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`it's our position that even if you combine Magnavox and Rumbolt,
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`they do not disclose direct entry via pushbuttons and there would be
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`no motivation to combine them anyway.
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`And in the Board's decision, Your Honor, the July 16, 2013
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`decision at pages 15 and 16, the Board acknowledged that Rumbolt
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`and Magnavox each failed to teach the additional limitation of Claims
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`2 and 5, and I'll read it to Your Honor, "using activation of one or
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`more pushbuttons of the keyboard to assist the subset of the selected
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`codes and data from the library to the macro pushbutton."
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`So the Board has already found that Rumbolt and
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`Magnavox failed to teach or disclose these limitations, so where does
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`the Petitioner find them? They try to find them in the Evans
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`reference. Now, Evans does not disclose this additional limitation of
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`Claims 2 and 5 because it doesn't disclose a library of codes and data.
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`Counsel for Petitioner mentioned Mr. Hayes' testimony where he
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`construed the term "library codes and data" and that it requires a
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`certain amount of pre-programming, and counsel seemed to suggest
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`that we came up with that definition after the Board's decision
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`instituting this IPR for some nefarious purpose or to get around the
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`Board's decision. Not so.
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`We weren't permitted to submit expert testimony in the
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`preliminary Patent Owner's response and it's perfectly proper to have
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`expert testimony on claim terms that were never construed. And
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`interestingly Dr. Herr does not attempt to construe library of codes
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`and data at all. He doesn't say what he means by it, so how can he
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`possibly apply a construction which he hasn't given us to the prior art?
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`Another important point, Your Honor, is in the Board's
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`decision, July decision, Footnote 6. The Board recognized that in the
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`re-examination proceeding on the '0
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