IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Applicant:
`
`Hayes et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2013-00152
`
`v.
`
`Filing Date:
`
`04/23/1996
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,614,906
`
`Trial Paralegal: Amy Kattula
`
`Title:
`
`Method for Selecting a
`Remote Control
`Command Set
`
`Attorney Doc.: 059489.123900
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.107
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that his correspondence is being electronically filed with the USPTO on this
`22nd day of May, 2013.
`
`By: /Eric J. Maiers/
`Eric J. Maiers
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................1
`
`II. CLAIM CONSTRUCTION..............................................................................2
`
`A.
`
`Broadest Reasonable Interpretation Of Claim 1 ...................................3
`
`1.
`
`2.
`
`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”................................................3
`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” ...............10
`
`B.
`
`Construction of Means-Plus Function Terms of Claim 16.................10
`
`1.
`
`2.
`
`3.
`
`4.
`
`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”......................................11
`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”..........................................11
`Claim Phrase: “means for indicating the halting of
`the actuation of the plurality of assignable user
`actuated switches or keys”..............................................12
`Claim Phrase: “means for setting the remote
`control to transmit future remote control
`commands from the command set containing the
`last transmitted effects observable command”...............13
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S INVALIDITY
`ARGUMENTS ..............................................................................................13
`
`A.
`
`Telefunken...........................................................................................14
`
`i
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`

`
`IPR2013-00152
`
`1.
`
`2.
`
`The USPTO Already Expressly Considered Telefunken
`In Allowing Claims 1 And 16...................................................14
`Telefunken Does Not Anticipate Claims 1 And 16..................14
`
`B.
`
`Telefunken in view of Casio ...............................................................16
`
`1.
`
`2.
`
`Telefunken In View Of Casio Does Not Render Claim 10
`Obvious.....................................................................................16
`Telefunken In View Of Casio Does Not Render Claim 12
`Obvious.....................................................................................18
`
`C.
`
`Sony in view of Telefunken ................................................................19
`
`1.
`
`2.
`
`The USPTO Already Considered The Teachings Of Sony
`In Allowing Claims 1 And 16...................................................19
`Sony In View Of Telefunken Does Not Render Claims 1
`And/Or 16 Obvious...................................................................20
`
`D.
`
`Sony and Telefunken in view of Casio ...............................................25
`
`1.
`
`2.
`
`Sony And Telefunken In View Of Casio Does Not
`Render Claim 10 Obvious.........................................................25
`Sony and Telefunken In View Of Casio Does Not Render
`Claim 12 Obvious. ....................................................................26
`
`E.
`
`GHV in view of MRH7700.................................................................27
`
`1.
`2.
`
`3.
`
`4.
`
`5.
`
`GHV Is Not Prior Art................................................................27
`GHV and MRH700 Are Cumulative To The Prior Art Of
`Record.......................................................................................28
`GHV In View Of MRH7700 Does Not Render Claim 1
`Obvious.....................................................................................29
`GHV In View Of MRH7700 Does Not Render Claim 10
`Obvious.....................................................................................33
`GHV In View Of MRH7700 Does Not Render Claim 12
`Obvious.....................................................................................34
`
`F.
`G.
`H.
`
`GHV and MRH7700 in view of Telefunken.......................................35
`GHV and Pioneer in view of Casio.....................................................35
`GHV and Pioneer in view of Telefunken............................................39
`
`IV. CONCLUSION...............................................................................................40
`
`ii
`
`

`
`I.
`
`INTRODUCTION
`In its Petition for Inter Partes Review of U.S. Patent No. 5,614,906
`
`(“Petition”), Petitioner alleges that various claims of U.S. Patent No. 5,614,906
`
`(“‘906 patent”) are anticipated by German Patent DE 3313493 to Telefunken
`
`(“Telefunken”). Petitioner further alleges that various claims of the ‘906 patent are
`
`rendered obvious by seven different combinations of prior art: (1) Telefunken in
`
`view of Japanese Patent JP 6311567 to Casio (“Casio”); (2) European Patent
`
`Application EP 0577267 A1 to Sony (“Sony”) in view of Telefunken; (3) Sony and
`
`Telefunkun in view of Casio; (4) GoldStar GHV-300 VCR Operating Manual
`
`(“GHV-300”) or GoldStar GHV-500 VCR Operating Manual (“GHV-500”)
`
`(collectively “GHV”) in view of Rauland-Borg MRH7700 IR Remote Control
`
`Manual (“MRH7700”); (5) GHV-300 (or GHV-500) and MRH7700 in view of
`
`Telefunken; (6) GHV-300 (or GHV-500) and Pioneer VSX-5900S Receiver
`
`Operating Instructions (“Pioneer”) in view of Casio; and (7) GHV-300 (or GHV-
`
`500) and Pioneer in view of Telefunken.
`
`The Board should decline to institute inter partes review proceedings based
`
`on each of the above grounds because each suffers from one or more fatal defects.
`
`For example, four of Petitioner’s bases rely upon references that are not prior art
`
`to the ‘906 patent. Further, five of Petitioner’s bases rely upon the Telefunken
`
`reference that the patent owner referred to and discussed in the “Description of
`
`1
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`

`
`IPR2013-00152
`
`Related Art” portion of the ‘906 patent specification. Finally, even ignoring these
`
`defects, the allegedly anticipatory Telefunken reference and each combination of
`
`references upon which Petitioner relies for its obviousness analysis fails to teach or
`
`suggest at least one limitation of each of the Claims of the ‘906 patent for which
`
`Petitioner claims the reference or combination of references invalidate.
`
`II.
`
`CLAIM CONSTRUCTION
`
`At the outset, Patent Owner agrees with Petitioner that because the ‘906
`
`patent has not expired, the Board must construe its claims under the “broadest
`
`reasonable interpretation” standard. In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d
`
`1359, 1364 (Fed. Cir. 2004); MPEP § 2111. Thus, during examination, “claims ...
`
`are to be given their broadest reasonable interpretation consistent with the
`
`specification, and ... claim language should be read in light of the specification as it
`
`would be interpreted by one of ordinary skill in the art.” Sci. Tech. Ctr., 367 F.3d
`
`at 1364; MPEP § 2111.
`
`Patent Owner disagrees, however, with Petitioner’s application of this
`
`standard to the Claims of the ‘906 patent at issue in this Petition.
`
`2
`
`

`
`IPR2013-00152
`
`A.
`
`Broadest Reasonable Interpretation Of Claim 1
`
`1.
`
`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”
`
`Patent Owner submits that the broadest reasonable construction of this claim
`
`phrase is “assigning an effects observable command from each of said plurality of
`
`command sets to corresponding, assignable user actuated switches or keys of said
`
`plurality of assignable user actuated switches or keys.” The claim language,
`
`specification, and prosecution history all confirm that Patent Owner’s construction
`
`is the broadest reasonable construction. Petitioner, on the other hand, construes
`
`this claim phrase in a vacuum, divorced from the intrinsic evidence that precludes
`
`Petitioner’s interpretation. Specifically, Petitioner asks that the Board construe this
`
`claim phrase to mean that all of the effects observable commands for all of the
`
`command sets are assigned to a single assignable user actuated switch or key,
`
`(Petition at 12-14,) which, aside from contradicting the claim language,
`
`specification, and prosecution history, would result in a claim construction that
`
`reads on the prior art that the Patent Owner expressly distinguished in the
`
`specification of the ‘906 patent.
`
`The language of Claim 1 confirms both the correctness of Patent Owner’s
`
`construction and the unreasonableness of Petitioner’s construction. At the outset,
`
`the preamble of Claim 1 confirms the existence of “a plurality of assignable user
`
`3
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`

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`IPR2013-00152
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`actuated switches or keys.” (Ex. 1001 at Claim 1.) If Claim 1 contemplated only a
`
`single, assignable user actuated switch or key, as Petitioner argues, then the
`
`applicant would not have provided antecedent basis for a “plurality” of such
`
`switches or keys.
`
`Further, once the effects observable commands from each of the command
`
`sets are assigned, “each assigned, effects observable command [is] to be
`
`transmitted when the corresponding one of the assignable user actuated switches or
`
`keys is actuated.” (Id. at Claim 1(a) (emphasis added).) Thus, an effects
`
`observable command is transmitted when the user actuates the corresponding
`
`assignable user actuated switch or key. Claim 1 continues: “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.” (Id. at Claim 1(b) (emphasis added).) The user actuates
`
`each one of the assignable user actuated switches or keys to transmit the
`
`corresponding effects observable command. These claim steps confirm the “one-
`
`to-one” relationship between a single command set (and its associated effects
`
`observable command), on one hand, that is assigned to a single user actuated
`
`switch or key, on the other.
`
`In contrast, Petitioner’s construction would render many of the steps of
`
`Claim 1 superfluous. If all of the effects observable commands were assigned to a
`
`4
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`

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`IPR2013-00152
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`single assignable user actuated switch or key, then there would be no need for the
`
`user to “actuat[e] 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.” (Id. at Claim 1(b)
`
`(emphasis added).) Likewise, the user cannot “halt[] the actuating of the plurality
`
`of assignable user actuated switches or keys” if there are no plurality of assignable
`
`user actuated switches or keys to actuate, but rather only a single assignable user
`
`actuated switch or key.1 The language of Claim 1 confirms the unreasonableness
`
`of Petitioner’s construction.
`
`The specification of the ‘906 patent also confirms that Patent Owner’s
`
`construction is the broadest reasonable interpretation and that an effects observable
`
`command from each of the command sets is assigned to a corresponding user
`
`actuated switch or key, not the same switch or key:
`
` “A command, whose effect is observable in the remotely controlled
`device is assigned to one of the user actuated keys. The keys are
`pressed one by one until the user observes the desired effect on the
`remotely controlled device.” (Ex. 1001 at Abstract (emphasis
`added).)
`
` “The method includes assigning multiple effects observable
`commands (e.g. a ‘power off’ command) from a group of command
`
`
`1 The same analysis applies to Claim 16 of the ‘906 patent.
`
`5
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`

`
`IPR2013-00152
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`sets stored in the remote control to multiple user actuated switches or
`keys of the remote control.” (Id. at 2:39-44 (emphasis added).)
`
` “By assigning a single command set to a single user actuated key, the
`negative effects of a user key actuation that results in a double key
`actuation or not registering due to failure to fully actuate the key is
`minimized. If the user suspects the key was not fully actuated, the
`user can repeat that particular key actuation. If the user inadvertently
`causes the remote to detect a double key actuation, the remote control
`merely sends the effects observable command from the assigned
`command set twice. If the user wishes to actuate a particular key
`several times in order to confirm its effect on the responding device,
`he may do so at any point during the process without affecting the
`process.” (Id. at 2:54:65 (emphasis added).)
`
` “Where the number of command sets to be searched through exceeds
`the number of keys with which the effects observable commands are
`assigned, the method additionally provides for the ability to page
`through sub-groups of command sets. Each subgroup being no larger
`than the number of assignable keys.” (Id. at 3:16-21 (emphasis
`added).)
`
` “Preferably the effects observable commands will be assigned to the
`user actuated keys in order of decreasing popularity.” (Id. at 5:18-20
`(emphasis added).)
`
` “If the number of searchable command sets is greater than the
`number of assignable user actuated keys or switches the searchable
`command sets are broken up into multiple pages of command sets no
`6
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`

`
`IPR2013-00152
`
`greater in size than the number of assignable user actuated keys that
`can be paged through using the channel up and channel down keys
`22. The effects observable commands from the currently selected
`page, initially the first page, of command sets is assigned to the
`assignable user actuated keys. If the number of searchable command
`sets is equal to or less than the number of assignable user actuated
`keys or switches, the effect observable commands from the
`searchable command sets, forming a single page of command sets,
`are assigned to the assignable user actuated keys.” (Id. at 6:6-19
`(emphasis added).)
`
` “In the preferred embodiment the assignable user actuated keys
`include the power key 14 and the numeric keys 16. The assignable
`user actuated keys are assigned in the order of the power key 14 first,
`followed by the numeric keys 16 in order starting with the “one” key
`and ending with the “zero” key.” (Id. at 6:31-35 (emphasis added).)
`
` “If the key pressed is a page down command (i.e. a channel down key
`22), and a subsequent page of command sets is defined. Then the
`remote control 10 reassigns an effects observable command from
`each of the command sets from the subsequent page of command sets
`to the assignable user actuated keys and loops back to wait for
`another key press. If the key pressed is a page up command (i.e. a
`channel up key 22), and a prior page of command sets is defined, then
`the remote control reassigns an effects observable command from
`each of the command sets from the prior page of command sets to the
`assignable user actuated keys and lops back to wait for another key
`press.” (Id. at 6:38-49 (emphasis added).)
`7
`
`

`
`IPR2013-00152
`
` “If the key pressed is an exit setup key (i.e. a magic key 20), then the
`remote control 10 sets the current command set for the currently
`selected mode to the command set corresponding to the effects
`observable command assigned to the last pressed assigned key.” (Id.
`at 6:50-54 (emphasis added).)
`
`Disregarding well-settled patent law, Petitioner asks the Board to ignore numerous
`
`statements and descriptions of preferred embodiments from the specification of the
`
`‘906 patent to (improperly) conclude that an effects observable command from
`
`each of the command sets are assigned to a single user actuated switch or key
`
`according to the method of Claim 1. See Primos Inc. v. Hunter’s Specialties Inc.,
`
`451 F.3d 841, 848 (Fed. Cir. 2006) (“[W]e … should not normally interpret a
`
`claim term to exclude a preferred embodiment.”); Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (noting that a construction that excludes
`
`a preferred embodiment “is rarely, if ever correct and would require highly
`
`persuasive evidentiary support”).
`
`Finally, the Examiner’s statements made during the prosecution of the ‘906
`
`patent unequivocally confirm that, in allowing the present claims, he interpreted
`
`Claim 1 consistent with Patent Owner’s suggested claim construction. The
`
`prosecution history, although brief, explains exactly why the Examiner allowed the
`
`‘906 patent claims:
`
`8
`
`

`
`IPR2013-00152
`
`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 [sic] 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 50 (emphasis added).)
`
`In sum, all of the intrinsic evidence confirms that Petitioner’s construction of
`
`“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” is
`
`unreasonable. For this reason alone, the Board should reject Petitioner’s
`
`construction and apply Patent Owner’s construction, namely, “assigning an effects
`
`observable command from each of said plurality of command sets to
`
`corresponding, assignable user actuated switches or keys of said plurality of
`
`assignable user actuated switches or keys,” to Petitioner’s invalidity arguments.2
`
`
`2 Petitioner relies on Patent Owner’s claim amendments to Patent Owner’s counterpart European
`patent application, see Exhibit 1014, to support its claim construction. By relying on such
`extrinsic evidence, Petitioner has committed one of the cardinal sins of claim construction,
`9
`
`

`
`IPR2013-00152
`
`2.
`
`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”
`
`Patent Owner submits that this claim phrase does not need additional
`
`construction. However, for the purposes of this Preliminary Response, Patent
`
`Owner does not dispute Petitioner’s proposed construction of the above term.
`
`B.
`
`Construction of Means-Plus Function Terms of Claim 16
`
`Patent Owner does not dispute that Claim 16 includes recitations in means-
`
`plus-function format nor that each of the following phrases is governed by 35
`
`U.S.C. § 112, ¶ 6 (now 35 U.S.C. § 112(f)).
`
`
`namely attempting to use extrinsic evidence to contradict the express teachings of the claim
`language, the specification, and the prosecution history. See, e.g., Intel Corp. v. VIA Techs., 319
`F.3d 1357, 1367 (Fed. Cir. 2003) (“When an analysis of intrinsic evidence resolves any
`ambiguity in a disputed claim term, it is improper to rely on extrinsic evidence to contradict the
`meaning so ascertained.”). In any case, Petitioner’s extrinsic evidence does not support
`Petitioner’s claim construction. The Examiner’s comments, issued before Patent Owner
`amended Claim 1, make clear that the Examiner always understood Patent Owner’s invention to
`require sequential actuation of individual keys, each of which, when actuated, transmitted a test
`command corresponding to a single command set. (Exhibit 1014 at 52 (“[I]n claim 1, during set
`up mode, each key of the remote control is assigned with the ‘test’ command in a specific
`format. The user pushes the keys one after the other, until he finds the one that corresponds to
`the required format for the specific device, and then stores the specific commands set.”
`(emphasis added).) Thus, even without Patent Owner’s claim amendment, the Examiner
`understood Patent Owner’s invention to require sequential actuation of individual keys until the
`desired effect is transmitted from the remote control and observed in the remotely controlled
`device—which is exactly how the invention of the ‘906 patent operates according to its
`“substantially identical claim language” (Petitioner’s words, see Petition at 14,) to its European
`counterpart.
`
`10
`
`

`
`IPR2013-00152
`
`1.
`
`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 of this means-plus-function term is “assigning an effects
`
`observable command from each of said plurality of command sets to
`
`corresponding, assignable user actuated switches or keys of said plurality of
`
`assignable user actuated switches or keys.” (See Ex. 1001 at Claim 1, Abstract,
`
`2:39-44, 2:54:65, 3:16-21, 5:18-20, 6:6-19, 6:31-35, 6:38-49, 6:50-54; Ex. 1002 at
`
`50 (as described above).) The structure that performs the stated function is a
`
`microprocessor executing one or more of the algorithms described in col. 2, lines
`
`39-44; col. 5, lines 17-27; and col. 6, lines 3-19 of the ‘906 patent. (See also Ex.
`
`1001 at FIGS. 3A, 3C, 4:8-11, 44-47.)3
`
`2.
`
`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”
`
`The stated function of this means-plus-function term is “transmitting said
`
`effects observable command when the corresponding one of said plurality of
`
`assignable user actuated switches or keys is actuated.” The structural elements
`
`disclosed by the ‘906 patent that performs this function are an LED driver circuit
`
`
`3 Petitioner mentions that U.S. District Judge Andrew J. Guilford of the Central District of
`California held this claim phrase to be invalid as indefinite. (Petition at 15, citing Ex. 1016,
`Claim Construction Order in Civil Action No. 8:12-cv-00329.) But, Judge Guilford applied a
`different claim construction standard than the standard applied before the PTO, namely the
`“broadest reasonable interpretation” standard. In any case, challenges under 35 U.S.C. § 112 are
`not permitted in inter partes review petitions.
`
`11
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`IPR2013-00152
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`and infrared LED, and their equivalents. (See Ex. 1001 at 4:29-37 (“The LED
`
`driver circuit 40 is coupled to the control circuit 30 and incorporates the visual
`
`LED 24 and the infra-red LED (not shown) located at the front 26 of the remote
`
`control 10 and provides the LEDs with driving power in response to signals
`
`received from the control circuit 30 …. The infra-red LED provides the signaling
`
`capability for sending the remote control signals to the devices to be controlled.”).)
`
`3.
`
`Claim Phrase: “means for indicating the halting of the
`actuation of the plurality of assignable user actuated switches
`or keys”
`
`The stated function of this means-plus-function term is “means for
`
`indicating the halting of the actuation of the plurality of assignable user actuated
`
`switches or keys.” The structural element disclosed by the ‘906 patent that
`
`performs this function is a microprocessor executing one or more of the algorithms
`
`described in col. 2, lines 49-51; col. 6, lines 51-58 (“If the key pressed is an exit
`
`setup key (i.e. a magic key 20), then the remote control 10 sets the current
`
`command set for the currently selected mode to the command set corresponding to
`
`the effects observable command assigned to the last pressed assigned key.
`
`Typically the user exits the setup procedure when the user observes the desired
`
`effect on the device to be controlled by the remote control 10, indicating that a
`
`compatible command set has been located.” (emphasis added)) of the ‘906 patent.
`
`(See also Ex. 1001 at FIG 3D, 4:8-11, 44-47.)
`
`12
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`

`
`IPR2013-00152
`
`4.
`
`Claim Phrase: “means for setting the remote control to
`transmit future remote control commands from the command
`set containing the last transmitted effects observable command”
`
`The stated function of this means-plus-function term is “setting the remote
`
`control to transmit future remote control commands from the command set
`
`containing the last transmitted effects observable command.” The structural
`
`element disclosed by the ‘906 patent that performs this function is a
`
`microprocessor executing one or more of the algorithms described in col. 2, lines
`
`49-53; col. 6, lines 51-58 (“If the key pressed is an exit setup key (i.e. a magic key
`
`20), then the remote control 10 sets the current command set for the currently
`
`selected mode to the command set corresponding to the effects observable
`
`command assigned to the last pressed assigned key. Typically the user exits the
`
`setup procedure when the user observes the desired effect on the device to be
`
`controlled by the remote control 10, indicating that a compatible command set has
`
`been located.” (emphasis added)) of the ‘906 patent. (See also Ex. 1001 at FIG
`
`3D, 4:8-11, 44-47.)
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S INVALIDITY
`ARGUMENTS
`
`Each of Petitioner’s eight alleged grounds for invalidity suffers from one or
`
`more fatal defects, such that the Board should not grant the Amended Petition.
`
`13
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`

`
`IPR2013-00152
`
`A.
`
`TELEFUNKEN
`
`1.
`
`The USPTO Already Considered Telefunken In Allowing
`Claims 1 And 16.
`
`The UPSTO considered Telefunken during prosecution of the ‘906 patent
`
`and, presumably, concluded that Telefunken was not a bar to patentability. Patent
`
`Owner identified and discussed Telefunken in the specification of the ‘906 patent
`
`and explained the prior art remote control set-up method disclosed therein. (Ex.
`
`1001 at 2:11-32.) In view of Patent Owner’s disclosure, the Examiner stated in his
`
`“Reasons for Allowance” that the “[t]he prior art does not teach or fairly suggest
`
`the novel remote control features set forth in claims 1-16 ….” (Ex. 1002 at 50.) In
`
`short, the Examiner allowed the claims over Patents Owner’s express disclosure of
`
`Telefunken. Thus, the Board should give deference to the USPTO’s prior
`
`determination of allowability, having considered the teachings of Telefunken as
`
`correctly described by Patent Owner in the ‘906 patent specification.
`
`2.
`
`Telefunken Does Not Anticipate Claims 1 And 16.
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`Considering Telefunken on its own, Telefunken does not teach or suggest all
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`of the elements of Claims 1 and/or 16. Specifically, Telefunken fails to teach or
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`suggest, under the proper claim construction noted above, “assigning an effects
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`observable command from each of said plurality of command sets to one of said
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`plurality of assignable user actuated switches or keys, each assigned, effects
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`observable command to be transmitted when the corresponding one of the
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`IPR2013-00152
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`assignable user actuated switches or keys is actuated” and “actuating sequentially
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`and individually each one of the plurality of assignable user actuated switches or
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`keys, to individually transmit each assigned effects observable command” of Claim
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`1 and “means for assigning an effects observable command from each of the
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`plurality of command sets to one of said plurality of assignable user actuated
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`switches or keys” and “means for transmitting said effects observable command
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`when the corresponding one of said plurality of assignable user actuated switches
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`or keys is actuated” of Claim 16.
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`Instead, as noted by the ‘906 patent specification, Telefunken expressly
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`teaches away from the above-referenced features by disclosing that actuating a
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`particular key, for example a “PLAY” key, upon which the remote control:
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`automatically cycles through the multiple columns of controls
`signals, transmitting a trial [PLAY] command, and observing the
`effect of the trial [PLAY] command on the device to be remotely
`operated. When the desired result is observed, the user signals the
`remote control that a successful [PLAY] command has been
`transmitted. The remote control then eliminates from consideration
`all columns of control signals that do not contain the matched
`successful trial [PLAY] command.
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`(Ex. 1001 at 2:11-27 (emphasis added); see also Ex. 1003 at 9.) Thus, the method
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`disclosed in Telefunken differs from that disclosed in the ‘906 patent because
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`Telefunken discloses “automatically” cycling through “multiple” control signals
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`IPR2013-00152
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`corresponding to a particular (effects observable) command of the remotely
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`controlled device (e.g., PLAY), (Ex. 1003 at 8-10,) whereas ‘906 patent Claims 1
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`and 16 require the sequential and individual actuation of keys, each corresponding
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`to a full command set, and each actuation transmitting a single effects observable
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`command. (Ex. 1001 at Claims 1 and 16.) Indeed, the ‘906 patent expressly seeks
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`to overcome these problems presented by such automatic cycling. (E.g., Ex. 1001
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`at 2:62-65 (“If the user wishes to actuate a particular key several times to in order
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`to confirm its effect on the responding device, he may do so at any point during the
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`process without affecting the process.”).)
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`Accordingly, Petitioner has failed to demonstrate a reasonable likelihood
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`that Telefunken anticipates Claims 1 and/or 16, and the Board should deny
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`Petitioner’s request for inter partes review on that basis.
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`B.
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`TELEFUNKEN IN VIEW OF CASIO
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`1.
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`Telefunken In View Of Casio Does Not Render Claim 10
`Obvious.
`Telefunken does not anticipate Claim 1, as noted in Section III.A.2, supra.
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`Casio does not remedy Telefunken’s deficiencies. Moreover, Petitioner has not
`
`alleged that Telefunken in view of Casio renders Claim 1 obvious. Therefore,
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`Petitioner has not shown that Telefunken in view of Casio renders Claim 10
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`obvious.
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`IPR2013-00152
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`Casio fails to teach or suggest, under the proper claim construction noted
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`above, “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,
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`each assigned, effects observable command to be transmitted when the
`
`corresponding one of the assignable user actuated switches or keys is actuated” and
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`“actuating sequentially and individually each one of the plurality of assignable user
`
`actuated switches or keys, to individually transmit each assigned effects observable
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`command,” each of which corresponds to a particular command set.
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`Casio teaches:
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`designated key in the key input part thereof is the Power key, the
`manufacturer data stored in the manufacturer data memory means is
`updated each time the Power key is operated, and a power on/off code
`corresponding to said updated manufacturer data is read from the
`remote control memory means and transmitted by the remote control
`transmission means, and thereby when the power of the intended
`operated device is turned on or off, the remote control code
`corresponding to said intended operated device is set at that time.
`
`(Ex. 1004 at 7 (emphasis added).) Casio discloses a “power on/off code” in the
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`context of a remote control device that requires repeatedly actuating the same key
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`to transmit different power on/off codes to determine w