throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Declaration of
`James T. Geier
`
`In Support of the Petition for Inter
`Partes Review of U.S. Patent No.
`7,589,642
`
`  
`In re Application of: Arling et al.
`
`Patent No.: 7,589,642
`
`Filed: December 16, 2003
`
`Issued: September 15, 2009
`
`Assignee: UEI Cayman Inc.
`
`Title: RELAYING KEY CODE
`SIGNALS THROUGH A REMOTE
`CONTROL DEVICE
`
`
`      
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`  
`
`DECLARATION OF JAMES T. GEIER
`
`
`
`Background and Qualifications
`
`1. My name is James T. Geier. I am the founder and principal
`
`consultant for Wireless-Nets. I have 30 years experience in the
`
`communications industry designing, analyzing and implementing
`
`communications systems, wireless networks, and mobile devices.
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`2.
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`I earned my Masters of Science in Electrical Engineering from the
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`Air Force Institute of Technology in 1990. I received my Bachelor of
`
`Science in Electrical Engineering from California State University in 1985.
`
`3.
`
` I served in the U.S. Air Force from 1977 to 1992 as a
`
`Commissioned Officer where I worked as a Communications System
`
`Engineer for six years, as a Systems Test Engineer for four years and a
`
`Systems Design Engineer for three years. After the Air Force, I worked in
`
`private industry for eight years before founding my current company,
`
`Wireless-Nets, Ltd. in April, 2000.
`
`4.
`
`In my role as a Communications Systems Engineer for the U.S. Air
`
`Force from 1977 to 1983, I performed acceptance testing of newly-designed
`
`radar systems and maintained automatic tracking radar systems in support of
`
`tactical Air Force operations worldwide at the 75th TCF. From 1986 to
`
`1989, I performed analog, digital, and protocol tests on various government
`
`wireless computer networks and developed testing approaches and methods
`
`as a Systems Test Engineer for the AFCC Operational Test and Evaluation
`
`Center as a Lieutenant. From 1990 to 1992 I served as a Captain at the
`
`Information Systems Center, where I evaluated the effectiveness of wireless
`
`LAN technology for use in mobile and portable military environments,
`
`represented the Air Force as part of the IEEE 802.11 Wireless LAN
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`standards development and designed and implemented large-scale LANs and
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`WANs for various government organizations.
`
`5. After the Air Force, I was employed by Adroit Systems, where I
`
`researched and analyzed wireless communications technologies for use in
`
`U.S. Department of Defense airborne platforms. In addition, I was employed
`
`by TASC, Inc., where I analyzed and developed communications systems
`
`for various applications, such as data communications on submarines and
`
`within electrical power plants, and designed and implemented databases for
`
`various applications, such as narcotics tracking systems. In addition, I was
`
`employed by Monarch Marking Systems, where I designed and developed
`
`wireless middleware that coordinated communications among various
`
`systems components, such as bar code scanners, printers and application
`
`servers.
`
`6. As a consultant for Wireless-Nets, Ltd., I have designed and
`
`implemented wireless systems for various applications. For example, I
`
`designed and implemented a wireless system that includes a transmitting
`
`device with a keypad, joystick or other input device that would generate a
`
`code indicating actuation of the input device and transmit the code to a
`
`receiver. The receiver would decode the code and generate and transmit
`
`commands to control various other devices.
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`7.
`
`I have authored over a dozen books on mobile and wireless topics,
`
`including Designing and Deploying 802.11n Wireless Networks (Cisco
`
`Press), Implementing 802.1X Security Solutions (Wiley), Wireless
`
`Networking Handbook (New Riders) and Network Re-engineering
`
`(McGraw- Hill).
`
`8.
`
`I have been an active participant within IEEE standards
`
`organizations, such as the IEEE 802.11 Working Group, and the Wi-Fi
`
`Alliance and have served as Chairman of the IEEE Computer Society,
`
`Dayton Section, and various conferences.
`
`9. A copy of my latest curriculum vitae (C.V.) is attached as
`
`Appendix A.
`
`
`Status as Independent Expert Witness
`
`
`
`10.
`
`I have been retained in this matter by Universal Remote Control,
`
`Inc. ("Petitioner" or "URC") to provide an analysis of the scope and content
`
`of U.S. Patent No. 7,589,642 (hereinafter the "'642 patent") relative to the
`
`state of the art at the time of the earliest application underlying the '642
`
`Patent. In particular, my analysis relates only to claims 2, 5 and 22-23. I
`
`have also been retained to provide analysis regarding what a person of
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`ordinary skill in the art related to universal remote control devices would
`
`have understood at the time of the earliest application underlying the '642
`
`patent.
`
`11.
`
`I am being compensated at the rate of $300 per hour for my work.
`
`My fee is not contingent on the outcome of any matter or on any of the
`
`technical positions I explain in this declaration. I have no financial interest in
`
`Petitioner.
`
`12.
`
`I have been informed that UEI Cayman Inc. (hereinafter referred to
`
`as "Patent Owner") is asserting the '642 Patent against Petitioner URC. I
`
`have no financial interest in the Patent Owner or the '642 patent nor to my
`
`recollection have I ever had any contact with the Patent Owner, or the
`
`inventors of the ‘642 patent, Paul Arling, Wayne Scott, Christopher
`
`Chambers or Joseph Lee Haughawout.
`
`Description of the Relevant Field and the Relevant
`Timeframe
`
`
`
`13.
`
`I have carefully reviewed the '642 Patent.
`
`14. For convenience, all of the information that I considered in
`
`arriving at my opinions is listed in Appendix B.
`
`15. Based on my review of these materials, I believe that the relevant
`
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`field for purposes of the '642 Patent is remote controls and consumer
`
`electronics. I have been informed that the relevant timeframe runs from
`
`around 1986 and through 2003.
`
`16. As described in above, I have extensive experience in the relevant
`
`field, including experience relating to wireless communications and
`
`coordination of system components. Based on my experience, I have an
`
`established understanding of the relevant field in the relevant timeframe.
`
`The Person of Ordinary Skill in the Relevant Field in the
`Relevant Timeframe
`
`
`
`17.
`
`I have been informed that "a person of ordinary skill in the relevant
`
`field" is a hypothetical person to whom an expert in the relevant field could
`
`assign a routine task with reasonable confidence that the task would be
`
`successfully carried out. I have been informed that the level of skill in the art
`
`is evidenced by the prior art references. The prior art discussed herein
`
`demonstrates that a person of ordinary skill in the art, at the time the '642
`
`patent was filed, would have a bachelors degree in electrical engineering,
`
`telecommunications, or computer science (or equivalent degree) with two
`
`years experience in the communications industry and was aware of
`
`programmable universal remote controls, including techniques for receiving
`
`and decoding remote control transmissions as well as encoding and
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`transmitting remote control transmissions and was aware of basic database
`
`theory for storing data.
`
`18. Based on my experience, I have an understanding of the
`
`capabilities of a person of ordinary skill in the relevant field. I have
`
`supervised, directed, and instructed many such persons over the course of
`
`my career.
`
`Background of the Technology
`
`
`
`19.
`
`In general, remote controls were developed to control electronic
`
`home appliances, such as televisions, stereos, and related devices. More
`
`recently, home automation systems have been developed to control
`
`additional components in the home including lighting, thermostats and the
`
`like. Remote controls utilize a variety of different schemes for
`
`encoding/decoding and transmitting/receiving data for typically wireless
`
`transmission to one or more electronic appliances. These appliances
`
`include receiving components that receive the transmission and decode the
`
`data transmitted therewith to perform the desired functions indicated by the
`
`data.
`
`20. Programmable universal remote controls allow a user to aggregate
`
`the command functions performed by multiple remote controls into a single
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`device. A universal remote control, once configured for, or matched to, a
`
`user's equipment, can be used to control several different devices. There are
`
`several different known approaches to providing a single remote control that
`
`can control multiple devices or components.
`
`21. Some universal remote controls include a learning mode in which
`
`the remote control actually learns to reproduce command codes that it learns
`
`from the dedicated remote control for a desired device. Such universal
`
`remote controls usually store multiple command sets related to the multiple
`
`types of components that are controlled, i.e. TV, DVD player, set top box
`
`etc.
`
`22. Programmable remote controls typically store multiple command
`
`sets for each type of device and allow a user to program, or match, the
`
`remote control to the particular components that the user wishes to control.
`
`This programming is typically accomplished via manipulation of buttons on
`
`the remote and selection of commands appropriate for the device.
`
`23. As illustrated by the references discussed below, a person of
`
`ordinary skill in the art, in the relevant timeframe, was aware of encoding
`
`and transmitting command codes to target devices, receiving command
`
`codes and decoding the command codes to provide a desired function. In
`
`addition, it was well known to maintain a library or collection of command
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`sets corresponding to different components and selecting and providing
`
`desired codes to a target device.
`
`The '642 Patent
`
`24.
`
` The '642 patent relates to a system in which an indicator signal is
`
`transmitted from a remote control device and a code generator identifies a
`
`codeset usable to communicate with a selected consumer device. The
`
`indicator signal includes an indication of a pressed key on the remote
`
`control. The pressed key corresponds to a function of the selected consumer
`
`device. Based on the identified codeset and the key indication, the code
`
`generator device provides a key code and modulates it onto a carrier signal
`
`to provide a code signal which is transmitted. See ‘642 patent at Abstract.
`
`As noted in the ‘642 patent, remote control devices usually control a selected
`
`electronic consumer device, or appliance by transmitting coded signals to the
`
`target applicant. These signals are commonly transmitted wirelessly, for
`
`example using infrared light or radio waves. The signals contain codes of a
`
`codeset associated with the particular device. Typically, each code
`
`corresponds to a function of the selected electronic device, including, but not
`
`limited to power on, power off, volume up, volume down, play, stop, select,
`
`channel up, channel down, etc. Typically, manufacturers use different
`
`codesets for communicating between appliances and their associated remote
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`control to avoid the possibility that a remote control signal intended for one
`
`device will not result in operation of a different device. Codesets may differ
`
`from each other in the specific bit patterns or codes assigned to various
`
`functions of the device and/or by the timing information used to describe
`
`how the key codes are modulated onto carrier signals for transmission.
`
`See’642 patent at col. 1, ll. 21-38.
`
`25. As noted above, consumers often prefer to have a single remote
`
`control that can control multiple, and preferably all of the components of
`
`their entertainment system. The ‘642 patent notes that a single remote
`
`control device may store several codesets such that it can be used to control
`
`many different target devices. See ‘642 patent at col. 1, ll. 39-45. Users
`
`typically match a particular codeset in the remote control to a particular
`
`device by activation of one or more buttons on the remote control and results
`
`in transmission of coded commands to the target appliance.
`
`26.
`
` Several references that were published and/or well known prior to
`
`the filing of the ‘642 patent, however, disclose a system in which
`
`transmissions from a remote control are received, associated with a
`
`command, and modulated onto a carrier for transmission to a target device as
`
`well as the other features required by claims 2, 5 and 22-23 of the ‘642
`
`patent.
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`27. The '642 patent issued from U.S. Patent Application No.
`
`10/737,029 (the “'029 application”), filed on December 16, 2003. I am
`
`informed that no claim to an earlier priority date has been made with respect
`
`to the ‘642 patent.
`
`Claim Interpretation
`
`28.
`
`In proceedings before the USPTO, I understand that the claims of
`
`an unexpired patent are to be given their broadest reasonable interpretation
`
`in view of the specification from the perspective of one skilled in the art,
`
`according to 37 C.F.R. § 42.100(b). Unless otherwise indicated, the terms of
`
`the ‘642 patent are used in their ordinary and customary sense as one skilled
`
`in the relevant field would understand them in light of the broadest
`
`reasonable interpretation.
`
`Unpatentability Based on Prior Art in the Present
`Proceedings
`
`
`
`29. As I note above, it is my understanding that the ‘642 patent does
`
`not claim any priority earlier than its December 16, 2003 filing date. It is
`
`my understanding that all of the art discussed below qualifies as prior art in
`
`view of this date.
`
`30.
`
`I have been informed that a patent claim can be found unpatentable
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`as anticipated when each and every claim limitation is found within a single
`
`reference expressly or inherently. I understand that an anticipation analysis
`
`involves a consideration of (1) the scope and content of the prior art; (2) the
`
`differences between the claimed inventions and the prior art; and (3) the
`
`level of ordinary skill in the pertinent art.
`
`31.
`
`I have been informed that a patent claim can be found unpatentable
`
`as obvious where the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would
`
`have been obvious at the time the invention was made to a person having
`
`ordinary skill in the relevant field. I understand that an obviousness analysis
`
`involves a consideration of (1) the scope and content of the prior art; (2) the
`
`differences between the claimed inventions and the prior art; (3) the level of
`
`ordinary skill in the pertinent art; and (4) secondary considerations of non-
`
`obviousness.
`
`32. My analysis of these considerations is set forth in the following
`
`sections.
`
`The ‘534 patent teaches all elements recited by claims 2 and
`5 of the '642 patent.
`
`
`
`33. U.S. Patent No. 5,081,534 to Geiger et al. (the “‘534 patent") was
`
`filed August 4, 1989 and issued January 14, 1992, more than a decade before
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`the ‘642 patent was filed. The '534 patent discloses a remote control
`
`transmitter 3 (remote control), that is associated with a television receiver 1.
`
`The remote control includes “keys for controlling various functions of the
`
`television receiver 1 and also various functions of one or more peripheral
`
`devices, such as the video recorder 4.” See ’534 patent at col. 3, ll. 50-55;
`
`Fig. 1. The ‘534 patent also discloses that “…when the remote control
`
`signal for a particular function of the peripheral device is received from a
`
`‘unified’ remote control transmitter supplied by the manufacturer of the
`
`television receiver, the television receiver automatically converts the code
`
`(which is not suitable for the peripheral device) of the received remote
`
`control signal into a new code…” Id. at col. 2, ll. 31-38. The ‘’534 patent
`
`further disclose that after conversion, “a correspondingly coded remote
`
`control signal is formed and coupled to the recorder 2 via the control path 5
`
`and initiates the desired PLAY function there.” Id. at col. 4, ll. 54-57.
`
`Basically, that is the purported invention of the ‘468 patent.
`
`34.
`
`In my opinion, the '534 patent teaches each and every limitation of
`
`at least claims 2 and 5 of the '642 patent.
`
`Claim 2
`
`  
`
`35.
`
`In my opinion, the '534 patent discloses a method by which the
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`system disclosed therein operates. See '534 patent, Abstract.
`
`36.
`
`In my opinion, the '534 patent discloses receiving a keystroke
`
`indicator signal from a remote control that indicates a key on the remote
`
`control that is selected by the user. See '534 patent at col. 3, ll. 63-64
`
`(remote control 3 transmits a signal, e. g. PLAY upon activation of the play
`
`key, this signal is received at the television receiver 1.)
`
`37.
`
` In my opinion, the '534 patent discloses generating a key code in
`
`a key code generator device using the received keystroke indicator signal.
`
`See '534 patent at col. 4, ll. 47-53 (television receiver 1 converts the PLAY
`
`code C11 from the remote control 3 into a play code C21 for the video
`
`recorder).
`
`38.
`
`In my opinion, the '534 patent discloses modulating the key code
`
`onto a carrier signal to make a key code signal. The ‘534 patent discloses
`
`that a coded remote control signal is formed and coupled to the video
`
`recorder using control path 5. See '534 patent at col. 4, ll.
`
`39. Control path 5 may be “wireless, by means of, e.g., an IR link,
`
`between an IR transmitter in the television receiver 1 and the remote control
`
`receiver in the video recorder 2.” Id. at col. 5, ll. 13-15. Transmission of a
`
`wireless signal, and in particular, an IR signal necessarily requires
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`modulation of the code data on a carrier signal. Indeed, this is
`
`acknowledged in the ‘642 patent itself. See ‘642 patent at col. 4, ll. 34-38.
`
`40.
`
`In my opinion, the '534 patent discloses transmitting the converted
`
`command (key code signal) to the electronic consumer device. See '534
`
`patent at col. 4, ll. 53-56 (television receiver 1 transmits the converted
`
`command code to the video recorder 2 via the control path 5, which may be
`
`a wireless IR system).
`
`Claim 5
`
`  
`
`41.
`
`In my opinion, the '534 patent discloses the features of claim 2 as
`
`noted above and further discloses pressing a power on key on the remote
`
`control to transmit a signal. The ‘534 patent teaches that “[T]he invention is
`
`useful for all types of control instructions for the peripheral devices,” (See
`
`534 patent at col. 3, ll. 19-20) which includes “power on.” Further, the ‘534
`
`patent discloses that the function corresponding to the button pressed on the
`
`remote control 3 is carried out at the video recorder 2 such that depressing
`
`the power on button would result in the video recorder going on. See '534
`
`patent at col. 4 ll. 46-56.
`
`42. Further, turning on the power of a peripheral device, such as a
`
`video recorder 2, is necessary in order to operate the video recorder at all.
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`Peripheral devices such as video recorders would typically not be left on
`
`after use, and thus, transmitting a power on signal to the television received
`
`1 from the remote control 3 to turn the video recorder on would have been a
`
`common and necessary step and certainly would have been obvious to a
`
`person of skill in the art.
`
`The '534 patent in combination with the admitted prior art of the ‘642
`patent and/or the ‘192 publication disclose all elements recited by claims
`22-23 of the '642 Patent
`
`
`Claim 22
`43. Claim 22 of the ‘642 patent depends on claim 2, and all the
`
`features of claim 2 are disclosed by the ’534 patent as noted above. A key
`
`code that includes a binary number, as required by claim 22 was well known
`
`in the art in 2003. The ‘642 patent itself notes that the key code is
`
`“comprised of a standardized system code and standardized key data.” See
`
`‘642 patent at col. 4, ll. 27-29. This is illustrated in Fig. 3 of the ‘642 patent,
`
`which shows a binary signal, or binary number. One of skill in the art would
`
`have readily used such a standard binary signal, or binary number, in the
`
`system of the ‘534 patent.
`
`44.
`
`In addition, when discussing the prior art, the ‘642 patent teaches
`
`that codesets of different consumer devices “can differ from each other not
`
`only by the bit patterns assigned to various functions of the associated
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`electronic consumer device.” See ‘642 patent at col. 1, ll. 34-36. That is, the
`
`codes of a command set are bit patterns. A bit can only be a “0” or a “1.”
`
`Thus, a bit pattern is necessarily a binary number. Thus, one skilled in the
`
`art would have readily used a binary number as the code from the television
`
`receiver to the video recorder in the ‘534 patent, and the ‘534 patent in
`
`combination with the admitted prior art of the ‘642 patent discloses all of the
`
`features of claim 22.
`
`Claim 23
`
`45. Claim 23 of the ‘642 patent depends on claim 2, and all the
`
`features of claim 2 are disclosed in the ‘534 patent as discussed above. A
`
`key code that includes a binary number and timing information as required
`
`by claim 23 was also well known at the time the ‘642 patent was filed. As
`
`noted above with respect to claim 22, the use of a binary number as the key
`
`code was well known as admitted in the ‘642 patent.
`
`46. The ‘642 patent concedes that the use of timing information for
`
`remote control transmission was also well known. See ’642 patent at col. 5,
`
`ll. 24-29 (related to pulse width modulation).
`
`47.
`
`In addition, it was well known that the timing information is used
`
`to modulated data onto carrier signals as further required by claim 23. As
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`noted above, however, the ‘642 patent discloses that the use of timing
`
`information in modulation (pulse width modulation) was well known. Id.
`
`Indeed, modulation of data onto any carrier signal requires timing
`
`information.
`
`48.
`
`In addition, International Patent Publication No. WO99/33192 (the
`
`”’192 publication”, which was filed December 18, 1997 and published July
`
`1, 1999, discloses a format of a remote control signal that includes timing
`
`and modulation information. See ‘192 publication at p. 5, ll. 15-17.. Thus,
`
`one skilled in the art would have readily used a key code that includes a
`
`binary number and timing information for use in modulating the code onto a
`
`carrier signal in the system of the ‘534 patent. The ‘534 patent in
`
`combination with the admitted prior art of the ‘642 patent and/or the
`
`disclosure of the ‘192 publication discloses all of the features of claim 23.
`
`The '282 patent teaches all elements recited by claim 2 of
`the '642 Patent.
`
`49. U.S. Patent No. 5,365,282 was filed January 19, 1993 and issued
`
`November 15, 1994 almost a decade before the filing date of the '642 patent.
`
`The ‘282 patent relates to a television viewing system employing modules
`
`such as VCR's, cable boxes or the like, which are remotely controllable. The
`
`'282 patent discloses a system including modules incorporating transmitters
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`for remotely controlling associated modules with the capability of
`
`automatically determining the remote control codes of the associated
`
`modules. See ‘282 patent at col. 1, ll. 6-13.
`
`50.
`
`In my opinion, the '282 patent teaches each and every limitation of
`
`claim 2 of the '642 patent.
`
`Claim 2
`51.
`In my opinion, the '282 patent discloses a method by which the
`
`system disclosed therein operates. Id.
`
`52. The '282 patent discloses receiving signals from a remote control,
`
`the signals indicating buttons actuated on the remote control. See ‘282
`
`patent at col. 3, ll. 42-45 (the central controller 100 of the VCR receives
`
`transmissions from the remote control).
`
`53.
`
` In my opinion, the '282 patent discloses generating a key code in
`
`a key code generator device using the received keystroke indicator signal.
`
`See ‘282 patent at col. 3, ll. 50-52 (control codes for the cable box and TV
`
`are stored in memory 106 that interfaces with control unit 100). As noted
`
`below, the control unit controls transmission of these codes to the cable box
`
`and T.V. to control the same.
`
`54.
`
`In my opinion, the '282 patent discloses modulating the key code
`
`onto a carrier signal to make a key code signal. See ‘282 patent at col. 2, ll.
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`2-5 (the control unit 100 of the video recorder transmits control codes to one
`
`or more associated units). As noted above, transmission of a code,
`
`particularly by infrared, inherently requires modulation of the code onto a
`
`carrier signal.
`
`55.
`
`In my opinion, the ‘282 patent discloses transmitting the key
`
`converted code (key code signal) from the converter to a consumer device.
`
`See ‘282 patent, Col. 2, ll. 42-49 (the control unit 100 controls infrared
`
`remote-control transmitter 108 to energize and tune the cable box 24 and
`
`T.V.).
`
`The '282 patent in combination with the admitted prior art of the ‘642
`patent and the ‘192 publication discloses all the features of claims 5 and
`22-23 of the '642 Patent
`
`Claim 5
`
`
`
`56. Claim 5 depends on claim 2 and the ‘282 patent discloses all of the
`
`features of claim 2, as noted above. As discussed above, turning on the
`
`power of a peripheral device is necessary in order to operate the peripheral
`
`device. Peripheral devices would typically not be left on after use, and thus,
`
`transmitting a power on signal from the remote control 3 to turn the
`
`peripheral device on would have been a common and necessary step in the
`
`system of the ’282 patent. In addition, the ‘282 patent discloses using an
`
`{01616201.1}
`
`Universal Remote Control Exhibit 1010: Page 20
`
`

`
`infrared transmitter to “energize and tune the cable box 24 and T.V.” ‘282
`
`patent at col. 2,ll. 42-49. Energizing these devices means turning them on,
`
`such that a power on code or command is transmitted to the cable box and
`
`TV from the control unit 100 to turn them on.
`
`Claim 22
`
`57. As noted above, claim 22 depends on claim and, the ‘282 patent
`
`discloses all of the features of claim 2. As further noted above, ‘642 patent
`
`concedes that a key code that includes a binary number as required by claim
`
`22 was well known at the time the ‘642 patent was filed. Thus, one skilled
`
`in the art would have readily used a key code including a binary number in
`
`the system of the ‘282 patent and all of the features of claim 22 are disclosed
`
`by the ‘282 patent in combination with the admitted prior art in the ‘642
`
`patent.
`
`Claim 23
`
`58. Claim 23 depends on claim 2, and the ‘282 patent discloses all of
`
`the features of claim 2 as noted above. In addition as noted above with
`
`respect to the ‘534 patent, the ‘642 patent makes clear that the use of a
`
`binary number in the key code, along with timing information was well
`
`known in the art and that the use of timing information to modulate code
`
`{01616201.1}
`
`Universal Remote Control Exhibit 1010: Page 21
`
`

`
`data onto a carrier signal was also well known and necessary. The ‘192
`
`publication also discloses these features such that one skilled in the art
`
`would have readily used a code that included a binary number and timing
`
`information use to modulate the code onto the carrier signal, and the ‘282
`
`patent in combination with the admitted prior art of the ‘642 patent and/or
`
`the ‘192 Publication discloses all the features of claim 23.
`
`Niles discloses all of the limitations of claim 2 of the ‘642 Patent
`
`59. Niles was published in April of 2002, more than a year prior to the
`
`filing of the ‘642 patent.
`
`60. Niles discloses a system including “an ergonomically designed RF
`
`(radio frequency) Tabletop Remote Control and an ‘intelligent’ Main System
`
`Unit (MSU).” Niles at p. 1. Niles discloses that the “Main System Unit is
`
`the ‘brain’ of the IntelliControl system. Once a RF command is issued from
`
`the Tabletop Remote, the MSU processes the command and controls all
`
`functions of the system.” Id. at p.4. The Main System Unit also includes
`
`“twelve IR Flasher Outputs” that “issue IR codes to IR controlled
`
`components.” Id. at p.5.
`
`61.
`
`It is my opinion that Niles discloses all of the features of claim 2 of
`
`the ‘642 patent.
`
`{01616201.1}
`
`Universal Remote Control Exhibit 1010: Page 22
`
`

`
`Claim 2
`
`62.
`
`In my opinion, Niles discloses a system that is operated according
`
`to a method.
`
`63.
`
`In my opinion, Niles discloses receiving a key indicator signal
`
`indicating a key actuated by a user. See Niles at pp. 1, 4 (an RF command
`
`(key indicator signal) is issued from the remote and received by the Main
`
`System Unit which controls all functions of the system).
`
`64.
`
`In my opinion, Niles discloses generating a key code based on the
`
`received indicator signal. See Niles at p. 23 (when a ‘Function Key’ is
`
`pressed, the system checks to see if a ‘Function Key Sequence’ has been
`
`programmed to be triggered by the selected Function Key and if so it will
`
`initiate the sequence).
`
`65.
`
`In my opinion, Niles discloses modulating the key code on a
`
`carrier signal. See Niles at p. 16 (all audio/video components in the system
`
`must be remote-controlled by infrared (IR) and the system is designed to be
`
`compatible with virtually any brand of equipment that transmits IR
`
`commands on carrier frequencies between 26kHZ and 110 KHZ and 455
`
`kHz). See Niles at p. 16. An noted above, transmission of codes using IR
`
`requires modulation of the codes onto a carrier signal.
`
`{01616201.1}
`
`Universal Remote Control Exhibit 1010: Page 23
`
`

`
`66.
`
`In my opinion, Niles discloses transmitting codes to consumer
`
`devices. See Niles at p. 5 (IR Flasher Outputs of the MSU issue IR codes to
`
`IR controlled components).
`
`Niles in combination with the admitted prior art of the ‘642
`patent, the ‘534 patent and/or the ‘ 568 patent discloses all
`of the features of claims 5 and 22-23 of the ‘642 patent.
`
`Claim 5
`
`67. Claim 5 depends on claim 2, and Niles discloses all of the features
`
`of claim 2 as noted above. Niles further discloses that it “has compiled an
`
`extensive IR Library of over 175 different products from most of the major
`
`manufacturers (including many direct access and separate ON/Off codes).”
`
`See Niles at p. 16. In view of this disclosure, one of ordinary skill in the art
`
`would readily actuate a power on button on the remote to turn one of the
`
`target component using the ON/Off codes that are stored and accessed . As
`
`noted above, turning on the power of a target component is necessary in
`
`order to operate that component. Peripheral devices such as those controlled
`
`by the MSU in Niles would typically not be left on after use, and thus,
`
`transmitting a power on signal from the remote control to the MSU to turn
`
`the peripheral device on would have been a common and necessary step in
`
`the system of Niles.
`
`68. Further as noted above, the ‘534 patent discloses this limitation.
`
`{01616201.1}
`
`Universal Remote Control Exhibit 1010: Page 24
`
`

`
`See ‘534 patent at col. 3, ll. 19-20 and col. 4, ll. 46-56. Thus, Niles and/or
`
`the '534 patent disclose the features of claim 5.
`
`
`
` Claims 22
`
`69. Claim 22 depends on

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