IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Applicant:
`
`O’Donnell et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2013-00168
`
`v.
`
`Filing Date:
`
`12/11/1992
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,414,426
`
`Trial Paralegal: Lawrence J. Banks
`
`Title:
`
`FAVORITE KEY
`MACRO AND
`CHAINED MACRO
`COMMAND IN A
`REMOTE CONTROL
`
`Attorney Doc.: 059489.124300
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.107
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`28th day of May, 2013
`
`/Eric J. Maiers/
`By:
` Eric J. Maiers
`
`

`

`IPR2013-00168
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................1
`
`PETITIONER LACKS STANDING TO REQUEST INTER PARTES
`REVIEW OF THE ‘426 PATENT ...................................................................2
`
`III. THE EFFECTIVE FILING DATE AND PRIORITY DATE OF THE ‘426
`PATENT ...........................................................................................................3
`
`A. The Effective Filing Date of the ‘426 Patent ...................................................4
`
`B. The ‘426 Patent’s Date of Invention Pre-Dates Wozniak................................5
`
`IV. CONCLUSION.................................................................................................7
`
`i
`
`

`

`IPR2013-00168
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`2001.
`
`2002.
`
`2003.
`
`PATENT OWNER’S EXHIBIT LIST
`Docket Sheet for Universal Electronics, Inc. v. Universal Remote
`Control, Inc., Case No. SAVC 00-1125 AHS (EEx)(C.D. Cal.)
`
`Petition to Correct Inventorship, filed July 3, 2012
`
`Declaration Under Rule 37 CFR 1.131 by Paul Darbee, dated January
`22, 1992
`
`ii
`
`

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`IPR2013-00168
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`I.
`
`INTRODUCTION
`
`Petitioner alleges that one or more claims of U.S. Patent No. 5,414,426
`
`(“‘426 patent”) are either anticipated by U.S. Patent No. 4,918,439 to Wozniak et
`
`al (“Wozniak”) or rendered obvious by seven different combinations of prior art:
`
`1) Realistic Catalog No. 15-1903, Universal Remote Control Owner’s Manual
`
`(“Realistic”); 2) Realistic in view of a “Cable Controller Plus” advertisement
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`(“DAK”) or SONY “Trinitron Color TV Operating Instructions for 6 models”
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`(“Sony”); 3) Japanese Patent Application No. JP5526759 to Matsushita
`
`(“Matsushita”); 4) Matsushita in view of DAK, Sony or Realistic; 5) Matsushita in
`
`view of U.S. Patent No. 4,959,810 to Darbee, et al. (“Darbee ‘810”); 6) Matsushita
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`in view of Darbee ‘810 in further view of DAK, Sony or Realistic; and 7) Wozniak
`
`in view of DAK, Sony or Realistic. As a threshold issue, the Board need not
`
`consider any of the foregoing alleged grounds of invalidity. Rather, the Board
`
`should dismiss Universal Remote Control, Inc.’s Petition for Inter Partes Review
`
`of U.S. Patent No. 5,414,426 (“Petition”) out of hand as time-barred, because the
`
`‘426 patent was already the subject of a complaint for patent infringement served
`
`on Petitioner nearly 12 years ago. Moreover, the Board should decline to institute
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`inter partes review proceedings based on most of the above grounds, because four
`
`of the six references upon which Petitioner relies are not prior art to the ‘426
`
`patent.
`
`1
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`

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`IPR2013-00168
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`II.
`
`PETITIONER LACKS STANDING TO REQUEST INTER PARTES
`REVIEW OF THE ‘426 PATENT
`Petitioner lacks standing for its present request for inter partes review,
`
`because it filed its Petition requesting the proceeding more than one year after
`
`Petitioner was served with a complaint alleging infringement of the ‘426 patent.
`
`35 U.S.C. § 315(b). Indeed, Petitioner concedes that “the ‘426 Patent was the
`
`subject of a complaint for patent infringement filed Nov. 15, 2000, styled
`
`Universal Electronics, Inc. v. Universal Remote Control, Inc., Case No. SAVC 00-
`
`1125 AHS (EEx)(C.D. Cal.)” (the “2000 Litigation”). Petition, Paper No. 2, at 3;
`
`see also Ex. 1018. Patent Owner served Petitioner with that complaint on March
`
`21, 2001—nearly 12 years prior Petitioner’s filing in the instant proceeding. 2000
`
`Litigation Docket Sheet, Ex. 2001 at 2. Thus, all elements of the § 315(b) bar have
`
`been met, and Petitioner is barred from bringing the present proceeding.
`
`Petitioner makes much of the fact that nearly two years after filing the 2000
`
`Litigation, Patent Owner withdrew its claims relating to the ‘426 patent, and the
`
`Court subsequently dismissed those claims, notably. The PTAB and Federal
`
`Circuit decisions upon which Petitioner relies to suggest that the dismissal of
`
`Patent Owner’s claims relating to the ‘426 patent made it “as though the action had
`
`never been brought” are misapplied and distinguishable from the present situation
`
`because of one very important distinction—the cases to which Petitioner cites each
`
`involved dismissals without prejudice, whereas the 2000 Litigation involved a
`
`2
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`

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`IPR2013-00168
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`dismissal with prejudice. Ex. 1020 at 2; see Macauto U.S.A. v. BOS GmBH & KG,
`
`IPR2012-00004, Ex. 1022 at 15 (“As to the requirement of service, the Board notes
`
`that the infringement suit against Macauto Taiwan was voluntarily dismissed
`
`without prejudice under Fed.R.Civ.P. 41(a), pursuant to a joint stipulation. The
`
`Federal Circuit has consistently interpreted the effect of such dismissals as leaving
`
`the parties as though the action had never been brought.”) (emphasis added,
`
`internal citations omitted); Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir.
`
`2002) (“The dismissal of an action without prejudice leaves the parties as though
`
`the action had never been brought”) (emphasis added). This distinction is not
`
`insignificant—a party whose claim is dismissed without prejudice is, generally
`
`speaking, free to bring that exact same claim again at a later time, whereas a party
`
`whose claim is dismissed with prejudice is not.1 Thus, unlike the complaint in
`
`Macauto, the PTAB cannot treat the complaint in the 2000 Litigation as if it had
`
`never been brought, and the PTAB should dismiss Petitioner’s Petition in its
`
`entirety for lack of standing. 35 U.S.C. § 315(b).
`
`III. THE EFFECTIVE FILING DATE AND PRIORITY DATE OF THE
`‘426 PATENT
`
`Even if the Board initially believes that Petitioner may have standing to
`
`bring the instant request, the Board should nevertheless decline to institute inter
`
`
`1 Indeed, the accused products involved in the ongoing litigation between Petitioner and Patent
`Owner are not only different from those involved in the 2000 Litigation, but were not even
`available in 2000 and therefore could not have been the subject of the 2000 Litigation.
`
`3
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`

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`IPR2013-00168
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`partes review based on Grounds 1, 2, and 4-8 of the Petition, as each of those
`
`grounds relies upon at least one reference that is not prior art to the ‘426 patent.
`
`Specifically, the ‘426 patent properly claims priority to U.S. Patent Ser. No.
`
`07/109,336, filed on October 14, 1987 (the “’336 application”), and therefore
`
`Darbee ‘810 (which forms a part of that chain of priority), Realistic and Sony are
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`not available as prior art. Further, because the subject matter of the claims at issue
`
`was invented before Wozniak’s earliest priority date, Wozniak is likewise
`
`unavailable as prior art.
`
`A.
`
`THE EFFECTIVE FILING DATE OF THE ‘426 PATENT
`
`The ‘426 patent properly claims priority to the ‘336 application and
`
`therefore is entitled to an effective filing date of October 14, 1987. Petitioner
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`alleges the ‘426 patent is not entitled to that filing date because the ‘426 patent
`
`purportedly does not identify a common inventor with the ‘336 application.
`
`However, Petitioner’s argument ignores the fact that in July of 2012, Patent Owner
`
`filed a Petition to Correct Inventorship by adding Paul Darbee as an inventor. See
`
`generally Petition to Correct Inventorship, Ex. 2002. While the USPTO has yet to
`
`consider that petition, Patent Owner has met all the requirements for correcting
`
`inventorship, such the USPTO’s issuance of an appropriate certificate of correction
`
`is purely a formality.2 Because there is common inventorship, the ‘426 properly
`
`
`2 Specifically, Patent Owner’s Petition to Correct Inventorship included: (1) a statement Paul
`Darbee that the inventorship error occurred without any deceptive intention on his part (Ex. 2002
`
`4
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`

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`IPR2013-00168
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`claims priority back to the ‘336 application by way of Darbee ‘810. Accordingly,
`
`Darbee ‘810, Realistic and Sony are not prior art to the ‘426 patent, and the Board
`
`should therefore deny Petitioner’s request for inter partes review at least with
`
`respect to Petitioner’s Grounds 1, 2, 4-6 and 8, which each rely upon one or more
`
`of the aforementioned references. See Petition, Paper No. 2, at 11-12.
`
`B.
`
`THE ‘426 PATENT’S DATE OF INVENTION PRE-DATES WOZNIAK
`
`Grounds 7 and 8 of the Petition allege invalidity based in whole or in part on
`
`the Wozniak reference. As a threshold matter, Wozniak cannot qualify as prior art
`
`under 35 U.S.C. § 102 if it was not published or filed prior to the date of invention
`
`for the subject matter of Claims 1-5, 10 and 13 of the ‘426 patent, which in this
`
`case is February 10, 1987. 35 U.S.C. §§ 102(a) and 102(e).
`
`During prosecution of U.S. Application Serial No. 07/586,957—the parent
`
`application to the ‘426 patent—Patent Owner submitted a Declaration Under Rule
`
`37 CFR 1.131 by named inventor Paul Darbee3 (“Darbee Declaration”). See
`
`generally Ex. 2003.4 In that Declaration, Mr. Darbee explains that he first
`
`
`at 3); (2) statement from the other named inventors agreeing to the change of inventorship (Id. at
`4-6); (3) a statement from Patent Owner agreeing to the change of inventorship in the patent (Id.
`at 7-8); and (4) the fee set forth in 37 C.F.R. § 1.20(b) (Id. at 11). See 37 C.F.R. § 1.324(b).
`3 As discussed above, Paul Darbee is being added as a named inventor of the ‘426 patent.
`4 Because the Darbee Declaration is part of the ‘426 patent’s intrinsic record, through a claim of
`priority, it is not “new testimonial evidence.” See 37 C.F.R. § 42.106(c). However, to the extent
`the Board deems otherwise, Patent Owner hereby requests that the Board authorize Patent
`Owner’s submission of the Darbee Declaration, instanter.
`
`5
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`

`

`IPR2013-00168
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`developed a prototype of the “Homer Control Unit,” or “HCU,”5 in the fall/winter
`
`of 1986 and that several more prototypes and production models were built
`
`between January 1987 and June 1987. Ex. 2003 at 1-2. In support of his
`
`Declaration, Mr. Darbee attached, amongst other documents, various revisions of
`
`the HCU’s user manual, including a draft instruction booklet (“Draft Booklet”),
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`Revision 1.2 to the Homer Specifications (“Revision 1.2”) and a Review Copy of
`
`the User’s Manual (“Review Copy”). See generally Ex. 2003 at 7-9, 19-35 and 41-
`
`56. The Draft Booklet bears a date of February 10, 1987; Revision 1.2 was created
`
`on March 8, 1987; and the Review Copy was created on June 8, 1987. Ex. 2003 at
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`7, 19 and 41. The Draft Booklet, Revision 1.2 and the Review Copy each disclose
`
`that a macro, “chain” or “DO Command” for tuning a device to a favorite channel
`
`may be assigned to a macro pushbutton (e.g. 0-9, A-H or Do1). Ex. 2003 at 9, 33-
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`35 and 49-51. Thus, each of the Draft Booklet, Revision 1.2 and the Review Copy,
`
`together with the Darbee Declaration, demonstrates that the named inventors
`
`conceived of the inventions of Claims Claims 1-5, 10 and 13 of the ‘426 patent and
`
`reduced them to practice by or before their respective creation dates and that those
`
`claims are entitled to a date of invention of at least February 10, 1987.
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`Accordingly, Wozniak is not prior art to the ‘426 patent, and the Board should
`
`therefore deny Petitioner’s request for inter partes review at least with respect to
`
`
`5 The inventors sometimes also referred to this device as “Uni-Com.” Ex. 2004 at 2.
`
`6
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`

`

`IPR2013-00168
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`Petitioner’s Grounds 7 and 8, which each rely upon Wozniak. See Petition, Paper
`
`No. 2, at 11-12.
`
`IV. CONCLUSION
`For the foregoing reasons6, there is no reasonable likelihood of Petitioner
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`prevailing with respect to even one of its alleged grounds of unpatentability
`
`concerning any of challenged Claims 1-5, 10 and 13, and the Board should deny
`
`Petitioner’s Petition for Inter Partes Review.
`
`Date: May 28, 2013
`
`Respectfully Submitted,
`GREENBERG TRAURIG, LLP
`
`/Eric J. Maiers/
`By: Michael A. Nicodema; Reg. No. 33,199
`200 Park Avenue
`P.O. Box 677
`Florham Park, NJ 07932-0677
`
`Gary R. Jarosik; Reg. No. 35,906
`Eric J. Maiers; Reg. No. 59,614
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`(312) 456-8449
`
`
`6 Patent Owner reserves the right to raise additional arguments in the event the Board decides initiate and inter
`partes review.
`
`7
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Timothy E. Bianchi
`Schwegman, Lundberg & Woessner, P.A.
`1600 TCF Tower
`121 South Eighth Street
`Minneapolis, MN 55402
`tbianchi@slwip.com; IPR-request@slwip.com
`
`Thomas C. Reynolds
`Schwegman, Lundberg & Woessner, P.A.
`150 Almaden Blvd.
`Suite 750
`San Jose, CA 95113
`treynolds@slwip.com
`
`Date:
`
`May 28, 2013
`
`/ Eric J. Maiers /
`Eric J. Maiers
`
`