In re Application of: Hayes et al.
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`Patent No.: 5,614,906
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`Filed: April 23, 1996
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`Issued: March 25, 1997
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`Assignee: Universal Electronics, Inc.
`
`Title: METHOD FOR SELECTING A
`REMOTE CONTROL
`COMMAND SET
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Petition for Inter Partes Review
`under 35 U.S.C. §§ 311–319
`and 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,614,906
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`

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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................ i
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`EXHIBIT LIST ...................................................................................................... iv
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`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1) ........ 1
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`A. Real Party-In-Interest .......................................................................... 1
`
`B. Related Matters ..................................................................................... 1
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`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) and
`Service Information under 37 C.F.R. § 42.8(b)(4) ...................................... 2
`
`II. PAYMENT OF FEES ................................................................................... 2
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW............................... 2
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`A. Grounds For Standing ......................................................................... 3
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`B.
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`Identification of Challenges ................................................................. 3
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`1. Claims for which inter partes review is requested ....................... 3
`
`2. The specific art and statutory ground(s) on which the challenge
`is based ................................................................................................... 3
`
`3. How the challenged claims are to be construed ........................... 6
`
`4. How the construed claims are unpatentable under the statutory
`grounds identified in 37 C.F.R. § 42.104(b)(2). .................................. 7
`
`5. Supporting evidence relied upon to support the challenge ........ 7
`
`IV. SUMMARY OF THE '906 PATENT .......................................................... 7
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`A. Summary of the Prosecution History ................................................. 7
`
`B. Overview of the '906 Patent ................................................................. 9
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`V. DETAILED CLAIM CONSTRUCTION .................................................. 10
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`A. Broadest Reasonable Interpretation of Claim 1 .............................. 12
`
`B. Construction of Means-Plus-Function Terms of Claim 16 ............ 15
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '906 PATENT IS UNPATENTABLE.................................... 17
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ...................................................................... 18
`
`A. Description of the Prior Art ............................................................... 19
`
`1. German Patent DE 3313493 to Telefunken (Ex. 1003) ............. 19
`
`2. Japanese Patent JP 6311567 to Casio (Ex. 1004). ..................... 23
`
`3. European Patent Application EP 0577267A1 to Sony (Ex.
`1005). .................................................................................................... 24
`
`4. GoldStar GHV-300 VCR Operating Manual (Ex. 1006) and
`GHV-500 VCR Operating Manual (Ex. 1007). ................................ 26
`
`5. Rauland-Borg MRH7700 IR Remote Control Manual (Ex.
`1009) ..................................................................................................... 28
`
`6. Pioneer VSX-5900S Receiver Operating Instructions (Ex. 1010)
`
` ........................................................................................................ 29
`
`B. Detailed Grounds for Unpatentability Arguments ......................... 31
`
`Ground 1. Claims 1 and 16 are Anticipated and Invalid under 35
`U.S.C. § 102(b) over Telefunken. ...................................................... 31
`
`Ground 2. Claims 10 and 12 are Obvious and Invalid under 35
`U.S.C. § 103 over Telefunken in view of Casio. ............................... 36
`
`Ground 3. Claims 1 and 16 are Obvious and Invalid under 35
`U.S.C. § 103 over Sony in view of Telefunken. ................................ 38
`
`Ground 4. Claims 10 and 12 are Obvious and Invalid under 35
`U.S.C. § 103 over Sony and Telefunken, in view of Casio. ............. 43
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`Ground 5. Claims 1, 10, and 12 are Obvious and Invalid under 35
`U.S.C. § 103 over GHV-300/GHV-500 in view of MRH7700. ........ 44
`
`Ground 6. Claim 16 is Obvious and Invalid under 35 U.S.C. § 103
`over GHV-300/GHV-500 and MRH7700, in view of Telefunken. . 50
`
`Ground 7. Claims 1, 10, and 12 are Obvious and Invalid under 35
`U.S.C. § 103 over GHV-300/GHV-500 and Pioneer in view of
`Casio. .................................................................................................... 52
`
`Ground 8. Claim 16 is Obvious and Invalid under 35 U.S.C. § 103
`over GHV-300/GHV-500 and Pioneer, in view of Telefunken. ...... 57
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`VII. CONCLUSION ............................................................................................ 60
`
`CERTIFICATE OF SERVICE ............................................................................ 61
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`EXHIBIT LIST
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`
`1001. U.S. Patent No. 5,614,906 to Hayes et al.
`
`1002. File History of application 08/636,666, which matured into the '906 patent.
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`1003. English Translation of German Patent DE 3313493 to Telefunken, with
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`certification of translation.
`
`1004. English Translation of Japanese Patent JP 6311567 to Casio, with
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`certification of translation.
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`1005. European Patent Application EP 0577267A1 to Sony.
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`1006. English Translation and Korean Original Version of GoldStar GHV-300
`
`VCR Operating Manual, with certification of translation (pp. 1-32, 38-46;
`
`missing pages 33-37 directed to “Using the scheduled recording function”).
`
`1007. English Translation and Korean Original Version of GoldStar GHV-500
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`VCR Operating Manual, with certification of translation (pp. 1-60).
`
`1008. English Translation and Korean Original Version of Advertisement for
`
`GoldStar GHV-300 and GHV-500 VTRs, in Dong Ah Daily newspaper in
`
`Korea, dated December 3, 1991, with certification of translation.
`
`1009. Rauland-Borg MRH7700 IR Remote Control Manual, dated May 9, 1994.
`
`1010. Pioneer VSX-5900S Stereo Receiver Operating Instructions, dated 1991.
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`1011. Pioneer Electronics (USA) Inc. "Parts & Accessories Online - Model
`
`VSX5900S," "Parts and Accessories Online – Part Number: ARB1327
`
`Information" – http://parts.pioneerelectronics.com/model.asp?modelNum=
`
`VSX5900S, http://parts.pioneerelectronics.com/part.asp?
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`productNum=ARB1327 (retrieved 1/22/2013).
`
`1012. Stereo Review, February 1992, pp. 1, 55.
`
`1013. Transcript of Testimony for Alex M. Cook, Jr., in Phillips Electronics North
`
`America Corporation, v. Universal Electronics Inc., Civil Action No. 94-
`
`392-RRM, entered July 11, 1995.
`
`1014. File History of European Counterpart Patent Application, EP 97301600.9.
`
`1015. Joint Claim Construction Chart in Universal Electronics, Inc. v. Universal
`
`Remote Control Inc., Civil Action No. 12-00329, entered January 15, 2013.
`
`1016. Claim Construction Order in Universal Electronics, Inc. v. Universal
`
`Remote Control Inc., Civil Action No. 12-00329, entered February 4, 2013.
`
`1017. Declaration of Alan J. Herr, Ph.D., In Support of the Petition for Inter Partes
`
`Review of U.S. Patent No. 5,614,906.
`
`1018. Declaration of Yeong Myung Koo, In Support of the Petition for Inter Partes
`
`Review of U.S. Patent No. 5,614,906.
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`Petitioner Universal Remote Control, Inc. (“URC” or “Petitioner”)
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`respectfully requests inter partes review of claims 1, 10, 12, and 16 of U.S. Patent
`
`No. 5,614,906 (the “'906 patent,” attached as Ex. 1001) in accordance with 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq.
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`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1)
`
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that URC is the real
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`party-in-interest.
`
`B. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that Claims 1, 10, 12,
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`and 16 of the '906 patent are involved in the pending litigation styled Universal
`
`Electronics Inc., v. Universal Remote Control, Inc., Case No. SACV 12-00329 AG
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`(JPRx) (C.D. Cal.), filed on March 2, 2012. The patents-in-suit are U.S. Patent
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`Nos.: 5,414,426; 5,568,367; 5,614,906; and 6,587,067.
`
`This inter partes review Petition is directed to U.S. Patent No. 5,614,906. A
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`petition for inter partes review was filed for U.S. Patent No. 6,587,067 and
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`assigned matter IPR2013-00127. The Patent Trial and Appeal Board (PTAB) may
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`wish to consider consolidating one or more of any other inter partes review actions
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`related to this matter to a single panel of Administrative Patent Judges for
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`administrative efficiency.
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`C.
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) and
`Service Information under 37 C.F.R. § 42.8(b)(4)
`Petitioner provides the following designation of counsel and service
`
`information:
`
`Lead Counsel
`Timothy E. Bianchi
`Schwegman, Lundberg & Woessner,
`P.A.
`1600 TCF Tower
`121 South Eighth Street
`Minneapolis, MN 55402
`Tel. (612) 373-6912
`Fax (612) 339-3061
`tbianchi@slwip.com
`USPTO Customer No. 21186
`USPTO Reg. No. 39,610
`
`II. PAYMENT OF FEES
`The undersigned authorizes the Office to charge $27,200 to Deposit Account
`
`Back-Up Counsel
`Thomas C. Reynolds
`Schwegman, Lundberg & Woessner,
`P.A.
`150 Almaden Blvd
`Suite 750
`San Jose, CA 95113
`Tel. (408) 278-4058
`Fax (408) 993-0832
`treynolds@slwip.com
`USPTO Customer No. 21186
`USPTO Reg. No. 32,488
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`No. 19-0743 as the fee required by 37 C.F.R. § 42.15(a) for this Petition for inter
`
`partes review. Review of four claims is being requested, so any excess claims fee
`
`is not included in this fee calculation. The undersigned further authorizes payment
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`for any additional fees that might be due in connection with this Petition to be
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`charged to the above referenced Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`As set forth below, each requirement of 37 C.F.R. § 42.104 for inter partes
`
`review of Claims 1, 10, 12, and 16 of the '906 patent is satisfied.
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`A. Grounds For Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the '906
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from petitioning for inter partes review of the '906 patent on the grounds
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`identified herein. This is because the '906 patent has not been subject to a previous
`
`estoppel-based proceeding, and the complaint served on URC, referenced above in
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`Section I(B), was served within the last 12 months.
`
`B. Identification of Challenges
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
`
`is that the PTAB cancel as unpatentable Claims 1, 10, 12, and 16 of the '906 patent.
`
`1. Claims for which inter partes review is requested
`Pursuant to 37 C.F.R. § 42.104(b)(1), Petitioner requests inter partes review
`
`of Claims 1, 10, 12, and 16 of the '906 patent.
`
`2. The specific art and statutory ground(s) on which the challenge is
`based
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '906 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`'906 patent under 35 U.S.C. § 102(a), (b), and/or (e):
`
`(1) German Patent Publication DE 3313493 A1 to Telefunken Fernseh und
`
`Rundfunk GmbH (“Telefunken”), published on October 18, 1984 (Ex.
`
`1003). Telefunken is prior art to the '906 patent under at least 35 U.S.C.
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`§ 102(b).
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`(2) Japanese Laid-open Patent JP 6311567 A to Casio Computer Co., Ltd.
`
`(“Casio”), published on November 4, 1994 (Ex. 1004). Casio is prior art
`
`to the '906 patent under at least 35 U.S.C. § 102(b).
`
`(3) European Patent Application EP 0577267 A1 to Sony Corp. (“Sony”),
`
`published on January 5, 1994 (Ex. 1005). Sony is prior art to the '906
`
`patent under at least 35 U.S.C. § 102(b).
`
`(4) GoldStar GHV-300 VCR Operating Manual, (pp. 1-32, 38-46; missing
`
`pages 33-37 directed to “Using the scheduled recording function”)
`
`(“GHV-300”) (Ex. 1006), and GoldStar GHV-500 VCR Operating
`
`Manual (“GHV-500”) (pp. 1-60) (Ex. 1007), undated and published at
`
`least one year before April 23, 1996. Additional evidence of publication
`
`is provided in the Advertisement for GoldStar GHV-300 and GHV-500
`
`VTRs, in Dong Ah Daily newspaper in Korea, dated December 3, 1991
`
`(Ex: 1008). GHV-300 and GHV-500 are prior art to the '906 patent
`
`under at least 35 U.S.C. § 102(b).
`
`(5) Rauland-Borg MRH7700 IR Remote Control Manual (“MRH7700”),
`
`dated May 9, 1994 (Ex. 1009). MRH7700 is prior art to the '906 patent
`
`under at least 35 U.S.C. § 102(b).
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`(6) Pioneer VSX-5900S Operating Instructions (“Pioneer”), copyright date
`
`1991 (Ex. 1010). Pioneer is prior art to the '906 patent under at least 35
`
`U.S.C. § 102(b). Additional evidence of publication more than one year
`
`before April 23, 1996 is provided in the Pioneer Electronics (USA) Inc.
`
`Parts & Accessories Online Documents (Ex: 1011) and Stereo Review,
`
`February 1992 (Ex. 1012).
`
`These prior art references were not identified as being considered by the
`
`Examiner during the prosecution of the underlying application, Serial No.
`
`08/636,666. The Sony reference identified above, however, does share a priority
`
`claim (Japanese application JP 1992-182856) with a reference identified by the
`
`Examiner during prosecution (Takiguchi et al., U.S. Patent No. 5,485,149). A
`
`discussion of the respective references and their applicability to Claims 1, 10, 12,
`
`and 16 of the '906 patent is provided in Section VII.
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '906 patent
`
`is requested on the following grounds.
`
`Ground 1. Claims 1 and 16 are anticipated by Telefunken under 35 U.S.C.
`
`§ 102.
`
`Ground 2. Claims 10 and 12 are obvious under 35 U.S.C. § 103 over
`
`Telefunken in view of Casio.
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`Ground 3. Claims 1 and 16 are obvious under 35 U.S.C. § 103 over Sony
`
`in view of Telefunken.
`
`Ground 4. Claims 10 and 12 are obvious under 35 U.S.C. § 103 over Sony
`
`and Telefunken, in further view of Casio.
`
`Ground 5. Claims 1, 10, and 12 are obvious under 35 U.S.C. § 103 over
`
`GHV-300/GHV-500 in view of MRH7700.
`
`Ground 6. Claim 16 is obvious under 35 U.S.C. § 103 over GHV-
`
`300/GHV-500 and MRH7700, in further view of Telefunken.
`
`Ground 7. Claims 1, 10, and 12 are obvious under 35 U.S.C. § 103 over
`
`GHV-300/GHV-500 and Pioneer, in further view of Casio.
`
`Ground 8. Claim 16 is obvious under 35 U.S.C. § 103 over GHV-
`
`300/GHV-500 and Pioneer, in further view of Telefunken.
`
`3. How the challenged claims are to be construed
`Pursuant to 37 C.F.R. § 42.104(b)(3), the claims of an unexpired patent
`
`subject to inter partes review shall receive the “broadest reasonable construction in
`
`light of the specification of the patent in which [they] appear[].” 42 C.F.R. §
`
`42.100(b). See also In re Trans Texas Holding Corp., 498 F.3d 1290, 1298 (Fed.
`
`Cir. 2007) (citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). As the
`
`Federal Circuit noted in Trans Texas, the Office has traditionally applied a broader
`
`standard than a Court when interpreting claim scope. Moreover, the Patent Office
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`is not bound by any district court claim construction. Trans Texas, 498 F.3d at
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`1297-98, 1301. Petitioner’s detailed construction of claim terms is provided in
`
`Section V.
`
`4. How the construed claims are unpatentable under the statutory
`grounds identified in 37 C.F.R. § 42.104(b)(2).
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how Claims 1, 10,
`
`12, and 16 of the '906 patent are unpatentable under the statutory grounds
`
`identified, including an identification of where each element is found in the prior
`
`art patents or printed publications, is provided in Section VII(B), below.
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`5. Supporting evidence relied upon to support the challenge
`Pursuant to 37 C.F.R. § 42.104(b)(5), the exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided in an exhibit list
`
`attached herein. The following text of the present Petition identifies the relevance
`
`of the evidence to the challenges raised and identifies specific portions of the
`
`evidence to support the challenges raised under the grounds of unpatentability.
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`Further supporting evidence, including detailed discussions of the respective prior
`
`art references, is provided in the Herr Declaration (Ex. 1017).
`
`IV. SUMMARY OF THE '906 PATENT
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`A. Summary of the Prosecution History
`The patent application that matured into the '906 patent, Serial No.
`
`08/636,666, was filed on April 23, 1996. A Notice of Allowance was mailed less
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`than six months later, on October 2, 1996, indicating the allowance of all claims
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`(1-16). The prosecution of the '906 Patent occurred without any rejections,
`
`amendments, cancellations, or modifications to the originally filed claims.
`
`The Notice of Allowance mailed October 2, 1996, included an Examiner’s
`
`Statement of Reasons for Allowance, with sections titled “Prior Art Citation” and
`
`“Reasons for Allowance.” The “Prior Art Citation” noted references “discussed in
`
`Applicant’s specification,” including Takiguchi et al. The “Reasons for
`
`Allowance” then provided a comparison of the claims to the cited prior art:
`
`“The prior art does not teach or fairly suggest the novel remote control
`features set forth in claims 1-16, whereby to program a remote control
`in a search mode, each key of a plurality of assignable keys is
`assigned an observable command from corresponding to each of a
`plurality of command sets. As noted by Applicants
`in
`the
`specification, this avoids erroneous operation often encountered in
`prior art devices where the same single key is repeatedly pressed to
`sequentially advance through the plurality of remote control command
`sets being searched and accidental operation of said same key resulted
`in error. The instant invention novelly avoids such erroneous
`operation by assigning separate keys to search through the separate
`command sets, each key corresponding to a different set.”
`Ex. 1002 at p. 50.
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`B. Overview of the '906 Patent
`The '906 patent discloses a method and apparatus to program a remote
`
`control. In particular, a definition of the “present invention” describes:
`
`“According to the present invention there is provided a method for
`selecting a remote control command set from a group of multiple
`command sets stored in a remote control, for controlling various
`remotely controllable electronic devices. The method
`includes
`assigning multiple effects observable commands (e.g. a 'power off'
`command) from a group of command sets stored in the remote control
`to multiple user actuated switches or keys of the remote control.”
`
`
`
`Ex. 1001 at Col. 2, ll. 36-44.
`
`
`
`The specification of the '906 patent discusses a technique for “assigning a
`
`single command set to a single user actuated key” to minimize “the negative
`
`effects of a user key actuation that results in a double key actuation or not
`
`registering due to failure to fully actuate.” Ex. 1001 at col. 2, ll. 54-59. In
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`addition, for this technique the specification discloses that if “the user suspects the
`
`key was not fully actuated, the user can repeat that particular key actuation.” Id.
`
`
`
`In the reasons for allowability, the Examiner referred to a technique for
`
`“assigning separate keys to search through the separate command sets, each key
`
`corresponding to a different set.” See Ex. 1002 at p. 50. Importantly, the claims
`
`recite “assigning an effects observable command from each of said plurality of
`
`command sets to one of said plurality of assignable user actuated switches or
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`keys” (emphasis added). This language was included in the claims as originally
`
`filed, in the original specification, and was not modified by amendment.
`
`
`
`As explained in the following section, a broadest reasonable construction of
`
`the independent claims suggests at least one assignment of multiple commands to
`
`an individual switch or key. Furthermore, this Petition will also demonstrate that
`
`the technique referenced by the Examiner was indeed known in the prior art,
`
`evidenced by the Sony EP and Takiguchi US patent publications (Ex. 1005), the
`
`Korean GHV-300 and GHV-500 VCR Operating Manuals (Exs. 1006, 1007), and
`
`the Pioneer VSX-5900 Stereo Receiver Operating Instructions (Ex. 1010), among
`
`others.
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`V. DETAILED CLAIM CONSTRUCTION
`The following provides a construction of terms in the '906 patent, including
`
`means-plus-function terms, under a broadest reasonable construction. The
`
`broadest reasonable interpretation of the claims must be “in light of the
`
`specification as it would be interpreted by one of ordinary skill in the art,” see In re
`
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), but limitations
`
`from the specification cannot be read into the claims. See Superguide Corp. v.
`
`DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
`
`understanding the claim language may be aided by explanations contained in the
`
`written description, it is important not to import into a claim limitations that are not
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`part of the claim”).
`
`Petitioner notes a Joint Claim Construction Chart was filed on January 15,
`
`2013 in the parallel district court litigation identified in Section I(B). See Ex.
`
`1015. This chart provides certain “agreed claim constructions” and “disputed
`
`claim constructions.” The agreed claim constructions include a reference to the
`
`phrase “individually transmit each assigned effects observable command” of claim
`
`1. The agreed construction identified to this phrase is “the commands are sent one
`
`at a time; each command has an associated effect that can be observed.” The
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`phrase “a plurality of user actuated mode keys” of claim 12 was identified with the
`
`agreed construction of “a plurality of user actuated keys for selecting a different
`
`device to be controlled (e.g., TV, VCR, cable box).” See Ex. 1015 at p. 4.
`
`Petitioner also notes that a “Markman” order in the litigation was issued by the
`
`district court on February 1, 2013. In this order, a construction was provided for
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`each of the means-plus-function elements of claim 16. See Ex. 1016 at pp. 20-26.
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`Because the claim interpretation standards used by courts in patent litigation
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`are different from the claim interpretation standards used in claim examination
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`proceedings (including inter partes review), any claim interpretations submitted
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`herein are neither binding in litigation, nor do such claim interpretations
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`necessarily correspond to the construction of claims under the standards used in
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`litigation. The interpretation presented either implicitly or explicitly herein should
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`not be viewed as constituting, in whole or in part, Petitioner’s own interpretation
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`and/or construction of such claims for the purposes of the underlying litigation.
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`A. Broadest Reasonable Interpretation of Claim 1
`Petitioner submits that all terms of Claim 1 should be given their plain and
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`ordinary meaning, subject to the following constructions:
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`a. Claim Phrase: "assigning an effects observable command from
`each of said plurality of command sets to one of said plurality of
`assignable user actuated switches or keys"
`Proposed Construction: Petitioner submits that a broadest reasonable
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`construction of this phrase is “assigning an effects observable command from each
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`of the plurality of command sets to one assignable user actuated switch or key of
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`the plurality of assignable user actuated switches or keys.” Patent Owner’s choice
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`to use the term “one” in the phrase recites an assignment of an effects observable
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`command from each of the plurality of command sets to one assignable user
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`actuated switch or key.1 However, a broadest reasonable construction would also
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`recognize that the open-ended transitional phrase “comprising” used in Claim 1
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`does not preclude (or require) additional assignments to switches or keys.
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`Consequently, a broadest reasonable construction would require at least one
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`1 Since the claim language is identical to what was originally filed, it forms a part
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`of the original specification and supports the claim as issued. See 35 U.S.C.
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`§112(b); In re Benno, 768 F.2d 1340 (Fed. Cir. 1985).
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`assignment of an effects observable command from each of the plurality of
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`command sets to one assignable user actuated switch or key, but does not preclude
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`other assignments.
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`In contrast, a construction of the term “one” to mean anything else, such as
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`“a plurality of,” would be broad, but it would not be a reasonable interpretation,
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`because “a plurality of” has consistently been interpreted to mean “more than one,”
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`which cannot be “one.” See Bilstad v. Wakalopulos, 386 F.3d 1116, 1122-23 (Fed.
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`Cir. 2004). Such a commonly used and understood term should not be construed to
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`the opposite of its plain meaning. See Chef America, Inc. v. Lamb-Weston, Inc.,
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`358 F.3d 1371, 1372 (Fed. Cir. 2004) (“[O]rdinary, simple English words whose
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`meaning is clear and unquestionable” in claims are construed to “mean exactly
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`what they say”). Petitioner respectfully submits that any interpretation that
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`attempts to change “one” to “a plurality of” would be literally inconsistent and fail
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`to provide proper notice and certainty to the public. See Vectra Fitness, Inc. v.
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`TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“The public is entitled to rely
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`upon the public record of a patent in determining the scope of the patent’s
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`claims…This reliance enables businesses, as well as others, to plan their future
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`conduct in as certain an environment as possible.”).
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`Petitioner notes that the literal claim recitation of assignment to one
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`assignable user actuated switch or key in a counterpart European patent application
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`to the '906 patent was amended by the Patent Owner in 2005 to broaden the
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`substantially identical claim language from “one” to “a respective one.” See Ex.
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`1014 at pp. 42, 46. The Patent Owner comments explained that this change was to
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`“move [sic] clearly distinguish the invention from the prior art.” See id. While
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`this amendment in European prosecution does not provide a ground of challenge
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`for U.S. prosecution, it demonstrates that Patent Owner attempted broader claim
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`language in 2005 in European prosecution. A similar amendment of the '906
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`patent claims was never made by Patent Owner in U.S. prosecution.
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`This Petition provides prior art grounds demonstrating a reasonable
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`likelihood of Petitioner prevailing on the challenged claims under Petitioner’s
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`proffered broadest reasonable interpretation of assignment of effects observable
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`commands to one assignable user actuated switch or key. Should the Board
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`decline to adopt the proffered interpretation, this Petition also provides multiple
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`grounds demonstrating prior art teachings of assignment of effects observable
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`commands to a plurality of assignable user actuated switches or keys. Petitioner
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`respectfully submits that these grounds of unpatentability provide a reasonable
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`likelihood that Petitioner will prevail on the challenged claims and grounds for
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`institution of trial on these challenges.
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`b. Claim Phrase: "actuating sequentially and individually each one
`of the plurality of assignable user actuated switches or keys, to
`individually transmit each assigned effects observable command
`until the proper effect is observed"
`Proposed Construction: A broadest reasonable construction of this phrase is
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`“pushing switches or keys one at a time to transmit effects observable commands,
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`the switches or keys being pushed until a user observable effect is observed.” This
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`construction is consistent with the interpretation of the “assigning” outlined above.
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`B. Construction of Means-Plus-Function Terms of Claim 16
`Claim 16 includes recitations in means-plus-function form. Petitioner
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`proposes that each of the phrases is governed by 35 U.S.C. § 112, ¶6 (now 35
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`U.S.C. § 112(f)). A proposed construction of these recitations follows:
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`a. Claim Phrase: "means for assigning an effects observable
`command from each of the plurality of command sets to one of
`said plurality of assignable user actuated switches or keys"
`The stated function, as best as can be interpreted, is “assigning an effects
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`observable command from each of the plurality of command sets to one assignable
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`user actuated switch of key of the plurality of assignable user actuated switches or
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`keys.” See Ex. 1001 at col. 4, ll. 44-49 and 58-62; col. 5, ll. 6-14; col. 6, ll. 31-35.
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`The only structure arguably suggested to perform the function in the '906 patent is
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`a general purpose microprocessor. Ex. 1001 at col. 4, ll. 8-13. (In the Markman
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`order (Ex. 1016) the district court found this claim term indefinite due to the '906
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`patent’s failure to provide an algorithm for the phrase. Ex. 1016 at p. 22).
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`Petition for Inter Partes Review of U.S. Patent No. 5,614,906
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`b. Claim Phrase: "means for transmitting said effects observable
`command when the corresponding one of said plurality of
`assignable user actuated switches or keys is actuated"
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`Petitioner notes that there is no antecedent basis for “the corresponding one”
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`in this claim phrase; as best as can be interpreted, the stated function is
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`“transmitting the effects observable command when a corresponding one
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`assignable user actuated switch or key of the plurality of assignable user actuated
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`switches or keys is actuated.” See Ex. 1001 at col. 6, ll. 20-29. One structural
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`element disclosed by the '906 patent that could be ascribed to perform this function
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`includes a LED driver circuit and infrared LED. See Ex. 1001 at col. 4, ll. 29-33.
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`This is consistent with the Markman order. Ex. 1016 at pp. 22-24.
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`c. Claim Phrase: "means for indicating the halting of the actuation
`of the plurality of assignable user actuated switches or keys"
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`The phrase lacks antecedent basis for the portion stating “the halting of the
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`actuation”; interpreting the claim phrase as best as can be understood, the stated
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`function is “indicating the halting of the actuation of the plurality of assignable
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`user actuated switches or keys.” See Ex. 1001 at col. 6, ll. 55-58. There is no
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`structure suggested in the '906 patent to perform the stated function; however,
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`since challenges under 35 U.S.C. § 11