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
`
`RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.120
`
`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
`9th day of October, 2013
`
`/Cynthia Tapia/
`By:
` Cynthia Tapia
`
`

`

`IPR2013-00127
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................1
`
`II. DATE OF INVENTION...................................................................................2
`
`A. Conception and Reduction to Practice .............................................................2
`
`B. Subsequent Creation of User Manuals.............................................................4
`
`1. Revision 1.1...................................................................................................4
`
`2. Revision 1.2...................................................................................................7
`
`3. Review Copy.................................................................................................9
`
`C. Subsequent PCB Design.................................................................................11
`
`D. The Pre-Production Model .............................................................................12
`
`E. Source Code....................................................................................................13
`
`III. CLAIM CONSTRUCTION............................................................................14
`
`IV. PATENT OWNER’S RESPONSE TO PETITIONER’S INVALIDITY
`
`ARGUMENTS................................................................................................17
`
`A. Rumbolt in View of Magnavox......................................................................17
`
`1. Magnavox Is Not Prior Art to the ‘067 Patent............................................17
`
`2. Rumbolt Alone Does Not Render Claims 1, 3, 4 and 6 Obvious ...............18
`
`3. The Combination of Rumbolt and Magnavox Does Not Render Claims 1,
`
`3, 4 and 6 Obvious.......................................................................................18
`
`B. Rumbolt in View of Magnavox in Further View of Evans............................26
`
`i
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`IPR2013-00127
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`1. Neither Magnavox nor Evans Is Prior Art to the ‘067 Patent.....................26
`
`2. Rumbolt Alone Does Not Render Claims 2 and 5 Obvious .......................27
`
`3. The Combination of Rumbolt, Magnavox and Evans Does Not Render
`
`Claims 2 and 5 Obvious ..............................................................................27
`
`C. Wozniak in View of CORE............................................................................29
`
`1. Wozniak Is Not Prior Art to the ‘067 Patent...............................................29
`
`2. CORE Is Not Prior Art to the ‘067 Patent ..................................................30
`
`3. The Combination of Wozniak and CORE Does Not Render Claims 1-6
`
`Obvious .......................................................................................................31
`
`V. CONCLUSION...............................................................................................37
`
`ii
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`IPR2013-00127
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`Patent Owner’s Exhibit List
`
`Claim Construction Order from Universal Electronics, Inc. v.
`Universal Remote Control, Inc., C.D.Cal. Civ. No. 8:12-cv-00329
`
`Declaration of Paul Darbee from U.S. Ser. No. 07/586,957
`
`U.S. Patent No. 6,587,067 to Darbee, et al. (with Reexamination
`Certificate)
`
`Scheduling Order from Universal Electronics, Inc. v. Universal
`Remote Control, Inc., C.D.Cal. Civ. No. 8:12-cv-00329
`
`Declaration of Richard Ellis
`
`Declaration of Patrick Hayes
`
`Transcript of Deposition of Alan Herr
`
`2001.
`
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`iii
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`

`

`IPR2013-00127
`
`I.
`
`INTRODUCTION
`In its Amended Petition for Inter Partes Review of U.S. Patent No.
`
`6,587,067 (“Amended Petition”), Petitioner alleged 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”) in view of PR Newswire
`
`(April 9, 1987), Magnavox unveils Total Remote Tuning System and second
`
`generation Universal Remote Control (“Magnavox”); 2) Rumbolt 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 granted-in-part and denied-in-part the
`
`Amended Petition, instituting inter partes review proceedings based on the
`
`following grounds: 1) Claims 1, 3, 4 and 6 based on Rumbolt in view of
`
`Magnavox; 2) Claims 2 and 5 based on Rumbolt in view of Magnavox in further
`
`view of Evans; and 3) Claims 1-6 based on Wozniak in view of CORE. The Board
`
`should affirm the validity of Claims 1-6 of the ‘067 patent, because each of
`
`Petitioner’s remaining grounds for invalidity suffers from the same fatal defect—
`
`all three of Petitioner’s remaining bases rely upon one or more references that are
`
`not prior art to the ‘067 patent. Finally, even ignoring that fatal defect, each
`
`1
`
`

`

`IPR2013-00127
`
`combination upon which inter partes review has been instituted fails to teach or
`
`suggest at least one limitation of each of Claims 1-6 of the ‘067 patent.
`
`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 the fall/winter of 1986. 35 U.S.C. §§ 102(a)
`
`and 102(e).
`
`A.
`
`CONCEPTION AND REDUCTION TO PRACTICE
`
`Patent Owner has submitted herewith for the Board’s consideration the
`
`declaration of the ‘067 patent’s co-inventor, Richard Ellis (“Ellis Declaration” or
`
`“Ellis Decl.”). See generally Ex. 2005. In that Declaration, Mr. Ellis explains,
`
`limitation-by-limitation, that he and the other inventors conceived of the invention
`
`of Claims 1-6 of the ‘067 patent back in 1986. Id. at ¶¶ 6-13. Specifically, they
`
`devised a universal remote control that had the capability for “direct entry”
`
`matching to a plurality of home appliances by entering a code via the remote’s
`
`pushbuttons that corresponded to a particular set of command codes in a pre-
`
`loaded library, as well as the capability for assigning a macro command to a macro
`
`2
`
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`IPR2013-00127
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`pushbutton. Ellis Decl. at ¶¶ 7-9. He further confirmed that the inventors first
`
`reduced Claims 1-6 of the ‘067 patent to practice in the fall/winter of 1986, when
`
`they created a prototype remote control—dubbed the “Homer Control Unit,” or
`
`HCU” for short1—which was fully operational in terms of the claimed features of
`
`the ‘067 patent and suitable for its intended purpose. Id. at ¶ 15. In support, Mr.
`
`Ellis attaches to his declaration a photograph of the prototype, as it existed in the
`
`fall/winter of 1986, as well as a copy of the prototype’s circuit schematic. Id. at ¶¶
`
`15-16, pp. 19 and 21.2 In short, the inventors conceived of the invention of Claims
`
`1-6 of the ‘067 patent in 1986 and reduced the claimed invention to practice by the
`
`fall of 1986.
`
`The inventors reduced Claims 1-6 to practice again in the winter of
`
`1986/1987 when they created a second, development prototype that likewise was
`
`working and suitable for its intended purpose. Id. at ¶ 17. Again, Mr. Ellis has
`
`attached a photograph of that prototype of his declaration. Id. at ¶ 17, pp. 23.
`
`While the inventors continued to refine the HCU over the ensuing months,
`
`the manner in which they implemented the direct entry and macro programming
`
`techniques did not change. Id. at ¶ 14. As part of their continuing development,
`
`the inventors began to prepare artwork for formal printed circuit boards and initial
`
`1 The inventors sometimes also referred to this device as “UniWAND” or UNI-COM.” Ellis
`Decl. at ¶¶ 6, 40-43.
`
`2 Mr. Ellis has also attached to his declaration several subsequent revisions of that circuit
`schematic. Ellis Decl. at ¶¶ 25, 31, 38 and 43-44, pp. 34, 59, 168, 189 and 191.
`
`3
`
`

`

`IPR2013-00127
`
`drafts of user manuals. Ellis Decl. at ¶ 20. Importantly, Mr. Ellis explains that the
`
`inventors would not have gone through the time, effort and expense of either of
`
`those endeavors “until [they] were confident [they] had working prototypes that
`
`were suitable for their intended purpose.” Id. at ¶ 18. Thus, the creation of user
`
`manuals and the development of PCBs was merely epilogue to, and served to more
`
`formally document and corroborate, the conception and reduction to practice that
`
`had already occurred.
`
`B.
`
`SUBSEQUENT CREATION OF USER MANUALS
`
`1.
`
`Revision 1.1
`
`The inventors’ efforts to create user manuals began at least as early as
`
`February 18, 1987, the date of the Protostar3 HCU Manual Revision 1.1 (“Revision
`
`1.1”). See generally id. at 25-32. As described on pages 6 and 7 of Revision 1.1
`
`(pages 30 and 31 of Ex. 2005), the HCU was capable of being matched to a
`
`plurality of different home appliances of different manufacturers such that selected
`
`codes and data from its library could be used to transmit operating commands to
`
`the matched home appliances in response to activation of selected pushbuttons of
`
`the keyboard, wherein the pushbuttons of the keyboard were activated to directly
`
`identify each of the plurality of different home appliances of different
`
`manufacturers to which the HCU is to be matched (see ‘067 patent Claims 1, 3, 4
`
`
`3 In the early days of its business, Universal Electronics, Inc. was known as Protostar
`Electronics. Ellis Decl. at ¶ 2.
`
`4
`
`

`

`IPR2013-00127
`
`and 6). Ellis Decl. at ¶ 21. Specifically, Revision. 1.1 states, “Your HCU works
`
`with almost all modern TV, VCR and cable systems.” Id. at ¶ 21, p. 31. Page 6 of
`
`Revision 1.1 (page 30 of Ex. 2005) describes a “DIRECT LIBRARY ENTRY”
`
`method of matching the remote. Id. at ¶ 21, p. 30. Under this method, pushbuttons
`
`of the HCU (e.g. DO, RECALL, VCR and numerical pushbuttons) are used to
`
`directly identify and match the HCU to the target appliance. Id. at ¶ 21.4
`
`As described on pages 5 and 6 of Revision 1.1 (pages 29 and 30 of Ex.
`
`2005), the HCU was capable of assigning to a macro pushbutton a subset of the
`
`selected codes and data from the library whereafter activation of the macro
`
`pushbutton causes the HCU to use the subset of selected codes and data from the
`
`library to transmit a plurality of operating commands to one or more of the
`
`matched home appliances (see ‘067 patent Claims 1 and 4). Id. at ¶ 23. For
`
`example, as described on page 5 of Revision 1.1:
`
`
`4 In the Board’s July 16, 2013 Decision, the Board questioned the use of the term “probably” in
`the sentence appearing on page 6 of Rev. 1.1 that reads, “Digits entered will probably reflect the
`‘search result’ playback sequence, i.e. a trinary number sequence,” as purportedly suggesting that
`we did not have a “definite and permanent idea of the complete and operative invention.”
`However, as Mr. Ellis explains, this could not be farther from the truth, as reflected in the fact
`that the inventors had already developed working prototypes and begun drafting user manuals.
`Ellis Decl. at ¶ 22. Rather, the fact that the inventors had gone through the time, trouble and
`expense to begin drafting user manuals is conclusive of the fact that they had already
`successfully created working prototypes. Id. at ¶ 22. The use of “probably” in the subject
`sentence merely refers to the fact that provided the HCU has already been successfully matched
`to an appliance, it was capable of displaying with its LEDs “blink codes,” which informed the
`user of the unique identification code corresponding to the appliance. Id.; see Ex. 2005 at 28
`(“SEARCH RESULTS: ○ [A series of button presses] will initiate flashing sequence indicating
`the library selection found by the search sequence”). This blink code enabled the user to quickly
`reprogram the remote without having to look the unique identification code up in a book or table.
`Ellis Decl. at ¶ 22.
`
`5
`
`

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`IPR2013-00127
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`Macro playback will be accomplished by pressing DO and the key
`
`defined by the user except in the case of the top DO keys 1-4. The top
`
`DO keys have an assumed DO. This will be particularly convenient
`
`for powering the system on or off, and for switching from cable A to
`
`cable B in some systems.
`
`Ellis Decl. at 29. As should be readily appreciated, powering an audio/video
`
`system off typically requires the transmission of a plurality of operating commands
`
`to one or more matched home appliances (e.g. “power off” for a TV and “power
`
`off” for a VCR). Id. at ¶ 23.
`
`As described on pages 5 and 6 of Revision 1.1 (pages 29 and 30 of Ex.
`
`2005), the HCU was capable of 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 (see ‘067 patent Claims 2 and 5). Ellis Decl. at ¶ 24. For
`
`example, as described on page 5 of Revision 1.1:
`o DO and ENTER initiate a macro definition.
`o The next key pressed indicates which key is to be assigned the
`
`macro definition…
`
`Id. at 29.
`
`6
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`IPR2013-00127
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`2.
`
`Revision 1.2
`
`By March 8, 1987, the inventors had created a subsequent user manual, titled
`
`“Protostar Homer Specifications [Rev 1.2] (Protostar HCU Manual)” (“Revision
`
`1.2”), which further described the functionality of the HCU, which had already
`
`been reduced to practice for months. Ellis Decl. at ¶¶ 16 and 26. As described on
`
`pages 9 and 12 of Revision 1.2 (pages 44 and 47 of Ex. 2005), the HCU was
`
`capable of being matched to a plurality of different home appliances of different
`
`manufacturers such that selected codes and data from its library could be used to
`
`transmit operating commands to the matched home appliances in response to
`
`activation of selected pushbuttons of the keyboard, wherein the pushbuttons of the
`
`keyboard were activated to directly identify each of the plurality of different home
`
`appliances of different manufacturers to which the HCU is to be matched (see ‘067
`
`patent Claims 1, 3, 4 and 6). Ellis Decl. at ¶ 26. Specifically, Revision 1.2 states
`
`on page 12, “Your HCU works with almost all modern TV, VCR and cable
`
`systems.” Id. at ¶ 26, p. 47.
`
`Page 9 of Revision 1.2 describes a “DIRECT LIBRARY ENTRY” method
`
`of matching the remote. Id. at ¶ 26. Under this method, pushbuttons of the HCU
`
`(e.g. DO, RECALL, VCR and numerical pushbuttons) are used to directly identify
`
`and match the HCU to the target appliance. Id. at ¶ 26, p. 44. As described on
`
`pages 8 and 9 of Rev. 1.2 (pages 43 and 44 of Ex. 2005), the HCU was capable of
`
`7
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`

`IPR2013-00127
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`assigning to a macro pushbutton a subset of the selected codes and data from the
`
`library whereafter activation of the macro pushbutton causes the HCU to use the
`
`subset of selected codes and data from the library to transmit a plurality of
`
`operating commands to one or more of the matched home appliances (see ‘067
`
`patent Claims 1 and 4). Ellis Decl. at ¶ 27. For example, as described on page 8 of
`
`Revision 1.2:
`
`Macro playback will be accomplished by pressing DO and the key
`
`defined by the user except in the case of the top DO keys 1-4. The top
`
`DO keys have an assumed DO. This will be particularly convenient
`
`for powering the system on or off, and for switching from cable A to
`
`cable B in some systems.
`
`Id. at 43. Again, it should be appreciated that powering an audio/video system off
`
`typically requires the transmission of a plurality of operating commands to one or
`
`more matched home appliances (e.g. “power off” for a TV and “power off” for a
`
`VCR). Id. at ¶ 27.
`
`As described on pages 8 and 9 of Revision 1.2, the HCU was capable of
`
`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 (see ‘067
`
`patent Claims 2 and 5). Id. For example, as described on page 8:
`o DO and ENTER initiate a macro definition.
`
`8
`
`

`

`IPR2013-00127
`
`o The next key pressed indicates which key is to be assigned the
`
`macro definition…
`
`Ellis Decl. at 43.
`
`3.
`
`Review Copy
`
`By June 8, 1987, the inventors had created yet another user manual, titled
`
`“Universal Electronics UNI-COM Universal Remote Control User’s Manual
`
`Review Copy” (“Review Copy”). Id. at ¶ 40. As described on pages 12 and 13 of
`
`the Review Copy (pages 183 and 184 of Ex. 2005), the HCU was capable of being
`
`matched to a plurality of different home appliances of different manufacturers such
`
`that selected codes and data from its library could be used to transmit operating
`
`commands to the matched home appliances in response to activation of selected
`
`pushbuttons of the keyboard, wherein the pushbuttons of the keyboard were
`
`activated to directly identify each of the plurality of different home appliances of
`
`different manufacturers to which the HCU is to be matched (see ‘067 patent
`
`Claims 1, 3, 4 and 6). Id. Specifically, the Review Copy states on page 2 (page
`
`173 of Ex. 2005), “Your UNI-COM [also known as HCU] works with almost all
`
`modern television, VCR, cable and compact disc (CD) systems.” Id. at ¶ 40, p
`
`173. Page 12 of the Review Copy describes a “Quick-Match” method of matching
`
`the remote. Id. at ¶ 40. Under this method, pushbuttons of the HCU (e.g. DO,
`
`RECALL, VCR, and the channel up/down pushbuttons) are used to directly
`
`9
`
`

`

`IPR2013-00127
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`identify and match the HCU to the target appliance. Ellis Decl. at ¶ 40. In this
`
`revision, a combination of eight presses of CH+ and CH- buttons would identify to
`
`the HCU a unique binary number corresponding to the library of codes and data to
`
`be matched to the target appliance. Id. Although the buttons pressed (number keys
`
`vs. CH+/CH-) and the form of the code entered (3-digit decimal vs. 8-bit binary)
`
`changed, the core concept—directly identifying the target appliance to the HCU
`
`via the pushbuttons—always remained the same. Id.
`
`As described on pages 9-11 of the Review Copy (pages 180-182 of Ex.
`
`2005), the HCU was capable of assigning to a macro pushbutton a subset of the
`
`selected codes and data from the library whereafter activation of the macro
`
`pushbutton causes the HCU to use the subset of selected codes and data from the
`
`library to transmit a plurality of operating commands to one or more of the
`
`matched home appliances (see ‘067 patent Claims 1 and 4). Ellis Decl. at ¶ 41.
`
`For example, as described on pages 9-10:
`
`Before sitting down to watch your favorite show there are certain
`
`things you might have to do. For example, you may have to turn your
`
`TV, VCR and cable converter on, get your VCR ready to record, and
`
`set the cable converter to your favorite station. Normally with your
`
`old remote controls, it took a lot of button pressing, not to mention
`
`10
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`

`IPR2013-00127
`
`having to find the right remote control. With UNI-COM [HCU] you
`
`can do all this and more with the push of just one or two buttons!
`
`Ellis Decl. at 180-181.
`
`As described on pages 10 and 11 of the Review Copy, the HCU was capable
`
`of 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 (see ‘067
`
`patent Claims 2 and 5). Ellis Decl. at ¶ 42. For example, as described on page 11:
`
` First press Do, then Recall to let UNI-COM [HCU] know you
`
`are going to set-up a DO command…
`
` Select a button you want to use to perform the DO command
`
`you are setting up…
`
` Press the buttons you would normally press to do what you
`
`want.
`
` When you are finished setting up UNI-COM [HCU], press Do,
`
`then Recall.
`
`Id. at 182.
`
`C.
`
`SUBSEQUENT PCB DESIGN
`
`The inventors also began designing the PCB for the HCU in the winter and
`
`spring of 1987. Id. at ¶ 29. Typically, this would involve their creation of PCB
`
`“artwork” or mock-ups, which they would then send to a PCB fabricator to have
`
`11
`
`

`

`IPR2013-00127
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`samples made. Ellis Decl. at ¶ 29. Again, as Mr. Ellis explains, they would not
`
`have gone through the time, effort and expense of having printed circuit boards
`
`fabricated unless they had already produced a working prototype that was suitable
`
`for its intended purpose. Id. Mr. Ellis attached to his declaration a copy of Paul
`
`Darbee’s handwritten notes, dated March 23, 1987, of revisions that needed to be
`
`made to sample PCBs we had already previously received. Id. at ¶ 29, pp. 54-55.
`
`Mr. Ellis also attached to his declaration various revisions of PCB artwork, as well
`
`as a May 18, 1987 memorandum from Paul Darbee to the inventors’ PCB
`
`manufacturer, Inkel, requesting minor cosmetic and mechanical modifications to
`
`their PCBs. Id. at ¶¶ 32-33, 37, 39 and 45-46, pp. 61, 63-65, 163-166, 170, 193
`
`and 195.
`
`D.
`
`THE PRE-PRODUCTION MODEL
`
`The inventors made yet another prototype—a “pre-production model”—of
`
`their universal remote control in March/April of 1987, which likewise was working
`
`and suitable for its intended purpose. Id. at ¶ 30. Mr. Ellis attached photographs
`
`of the exterior and PCB of that pre-production model to his declaration. Id. at 57.
`
`As Mr. Ellis explains, the fact that the pre-production model included an actual
`
`PCB indicates that the inventors already previously reduced the invention to
`
`practice, i.e. in the first prototype created in the fall of 1986. Id. at ¶ 18.
`
`12
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`IPR2013-00127
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`E.
`
`SOURCE CODE
`
`The software that controlled much of the functionality of the HCU was
`
`written in the assembly programming language. Ellis Decl. at ¶ 34. Attached to
`
`Mr. Ellis’ declaration is a copy of the assembly language source code for the HCU
`
`as it existed on April 30, 1987. Id. As coded on pages 23-24 and 27-29 of the
`
`source code (pages 89-90 and 93-95 of Ex. 2005), the HCU was capable of being
`
`matched to a plurality of different home appliances of different manufacturers such
`
`that selected codes and data from its library could be used to transmit operating
`
`commands to the matched home appliances in response to activation of selected
`
`pushbuttons of the keyboard, wherein the pushbuttons of the keyboard were
`
`activated to directly identify each of the plurality of different home appliances of
`
`different manufacturers to which the HCU is to be matched (see ‘067 patent
`
`Claims 1, 3, 4 and 6). Ellis Decl. at ¶ 34. As coded on page 27 of the source code,
`
`the HCU was capable of assigning to a macro pushbutton a subset of the selected
`
`codes and data from the library whereafter activation of the macro pushbutton
`
`causes the HCU to use the subset of selected codes and data from the library to
`
`transmit a plurality of operating commands to one or more of the matched home
`
`appliances (see ‘067 patent Claims 1 and 4). Ellis Decl. at ¶ 35. As coded on
`
`pages 31-35 of the source code (pages 97-101 of Ex. 2005), the HCU was capable
`
`of using activation of one or more pushbuttons of the keyboard to assign the subset
`
`13
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`

`IPR2013-00127
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`of the selected codes and data from the library to the macro pushbutton (see ‘067
`
`patent Claims 2 and 5). Ellis Decl. at ¶ 36.
`
`III. CLAIM CONSTRUCTION
`
`It its July 16, 2013 Decision (Paper No. 13, hereinafter “Decision”), the
`
`Board adopted Judge Andrew J. Guilford’s construction of certain claim terms of
`
`the ‘067 patent as follows:
`
`Term
`
`Construction
`
`“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
`
`“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)
`
`to be matched
`
`14
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`IPR2013-00127
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`Term
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`Construction
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`“using activation of one or more pushbuttons
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`using codes entered through
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`of the keyboard to directly identify each of the
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`pushbuttons that directly
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`plurality of different home appliances of
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`identify each particular home
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`different manufacturers to which the universal
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`appliance to which the
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`remote control is to be matched”
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`universal remote control is to
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`(claim 6)
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`be matched
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`Decision at 7; Ex. 2001 at 34-35. The Board also concluded that using
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`pushbuttons “to assign” the subset of the selected codes and data from the library
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`to the macro pushbutton, as recited in Claims 2 and 5, should mean “pushbuttons
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`are used to designate or set apart the macro pushbutton as being associated with the
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`subset of the selected codes and data from the library.” Decision at 7.
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`It addition to the above terms, Patent Owner submits that the Board should
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`construe “a library of codes and data” to mean “a table programmed into the
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`remote control, the table comprising a variety of command codes corresponding to
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`particular appliances of different manufacturers.” This construction is consistent
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`with the claims, specification and prosecution history of the ‘067 patent and, as
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`confirmed by Patent Owner’s expert, Patrick Hayes, comports with the
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`understanding of one of ordinary skill in the art. See Declaration of Patrick H.
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`IPR2013-00127
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`Hayes, Ex. 2006 (“Hayes Decl.”), at ¶¶ 27-29. In particular, the ‘067 patent
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`describes one aspect of the invention as
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`methods for using the remote control device for finding, in a library
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`or table of code data for generating infrared codes for operating
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`different electrical apparatus manufactured by different manufacturers
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`stored in a RAM of the remote control device, the code data for
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`generating infrared coded signals for operating a particular apparatus.
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`‘067 patent, Col. 1, ll. 52-58. The “library or table of code data” is clearly
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`identified as (1) comprising codes for operating different appliances of different
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`manufacturers; and (2) being stored in the memory of the remote control device.
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`Hayes Decl. at ¶ 28.
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`Fig. 17 of the ‘067 patent is a flow chart that describes the direct entry
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`method of programming the remote control to operate with a particular appliance.
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`‘067 patent, Col. 10, ll. 44-46; Fig. 17. The eighth step in the process involves the
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`receipt of an identification code (referred to in the specification as a “blink code”)
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`via the pushbuttons, and the ninth step comprises looking up the identification code
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`in memory. ‘067 patent, Col. 10, ll.64-67; Fig. 17. Accordingly, the “library of
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`codes and data” required by the claims of the ‘067 patent requires a table of data
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`stored in memory comprising codes identifying particular appliances. Hayes Decl.
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`at ¶ 29. Thus, “a library of codes and data” should be construed as “a table
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`IPR2013-00127
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`programmed into the remote control, the table comprising a variety of command
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`codes corresponding to particular appliances of different manufacturers.”
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`IV. PATENT OWNER’S RESPONSE TO PETITIONER’S INVALIDITY
`ARGUMENTS
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`Each of Petitioner’s three remaining alleged grounds for invalidity suffers
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`from one or more fatal defects, such that the Board should affirm Claims 1-6 of the
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`‘067 patent. In support of its Response, Patent Owner has submitted, and cities
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`herein where appropriate, the declaration of its expert, Patrick H. Hayes, who has
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`over 20 years of experience designing universal remote controls. See generally
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`Hayes Decl.
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`A.
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`RUMBOLT IN VIEW OF MAGNAVOX
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`1. Magnavox Is Not Prior Art to the ‘067 Patent
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`Magnavox is not prior art to the ‘067 patent because it did not publish prior
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`to the invention of the subject matter of Claims 1-6 by the named inventors.
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`Magnavox bears a publication date of April 9, 1987. 35 U.S.C. § 102(a). As
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`discussed in greater detail in Section II, supra, the Ellis Declaration, and the
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`attached prototype photos, Revision 1.1, Revision 1.2, PCB artwork and source
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`code in particular, confirm that the named inventors had conceived and reduced to
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`practice the subject matter of Claims 1-6 prior to April 9, 1987. Thus, Magnavox
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`is not prior art to the ‘067 patent.
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`IPR2013-00127
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`2.
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`Rumbolt Alone Does Not Render Claims 1, 3, 4 and 6
`Obvious
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`As discussed above, Magnavox is not prior art, and therefore cannot be
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`combined with Rumbolt to render Claims 1, 3, 4 and 6 obvious. Considering
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`Rumbolt on its own, Petitioner concedes that Rumbolt does not teach or suggest
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`using activation of pushbuttons of a keyboard to directly identify each of a
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`plurality of different home appliances of different manufacturers to which the
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`remote control is to be matched, i.e. using codes entered through pushbuttons that
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`directly identify each particular home appliance to which the remote control is to
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`be matched. Amended Petition at 24; see Ex. 2001 at 34-35. Rather, the remote
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`control of Rumbolt is configured by setting a series of DIP switches 30A and 30B,
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`which are neither a) pushbuttons nor b) part of the remote control’s keyboard 18.
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`Ex. 1002 at col. 3:5-7 and Fig. 1.
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`Accordingly, Petitioner has failed to demonstrate that any of Claims 1, 3, 4
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`and 6 are rendered obvious by Rumbolt, and the Board should affirm the validity
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`of those claims.
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`3.
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`The Combination of Rumbolt and Magnavox Does Not
`Render Claims 1, 3, 4 and 6 Obvious
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`Even assuming that the Board considers Magnavox to be prior art for the
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`purposes of these proceedings (which it is not), the combination of Rumbolt and
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`Magnavox still does not render Claims 1, 3, 4 and 6 obvious. As discussed in
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`18
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`IPR2013-00127
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`Section IV.A.2, supra, Rumbolt fails to teach or suggest “the pushbuttons of the
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`keyboard being activated to directly identify each of the plurality of different home
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`appliances of different manufacturers to which the universal remote control is to be
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`matched,” as recited in Claims 1 and 4, or “using activation of one or more
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`pushbuttons of the keyboard to match the universal remote control to the plurality
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`of different home appliances of different manufacturers,” as recited in Claims 3
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`and 6. Magnavox fails to remedy these shortcomings of Rumbolt.
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`Petitioner’s allegation that “Magnavox teaches directly identifying the home
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`appliances to be controlled by the remote control via entering a code via
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`pushbuttons of the keyboard” takes serious liberties with Magnavox and reads in
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`disclosure where there simply is none. Magnavox’s entire description of how the
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`disclosed remote control is programmed falls within a single, four-sentence
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`paragraph, the entirety of which is reproduced below:
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`While the new 36-button Universal Remote is more technologically
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`advanced than its predecessor, the identification process has been
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`simplified. Each VCR and cable brand is listed in the front of the
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`operating manual with an assigned number. For instance, GE is 01,
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`RCA is 03, Zenith is 15. To identify a particular VCR, a viewer
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`simply presses the REC button on the remote, presses the on/off
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`button on the VCE or cable box and enters th