`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
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`1. My name is James T. Geier. I am the founder and principal
`
`consultant for Wireless-Nets. I have 30 years experience in the
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`communications industry designing, analyzing and implementing
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`communications systems, wireless networks, and mobile devices.
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`Universal Remote Control Exhibit 1010: Page 1
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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
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`Science in Electrical Engineering from California State University in 1985.
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`3.
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` I served in the U.S. Air Force from 1977 to 1992 as a
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`Commissioned Officer where I worked as a Communications System
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`Engineer for six years, as a Systems Test Engineer for four years and a
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`Systems Design Engineer for three years. After the Air Force, I worked in
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`private industry for eight years before founding my current company,
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`Wireless-Nets, Ltd. in April, 2000.
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`4.
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`In my role as a Communications Systems Engineer for the U.S. Air
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`Force from 1977 to 1983, I performed acceptance testing of newly-designed
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`radar systems and maintained automatic tracking radar systems in support of
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`tactical Air Force operations worldwide at the 75th TCF. From 1986 to
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`1989, I performed analog, digital, and protocol tests on various government
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`wireless computer networks and developed testing approaches and methods
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`as a Systems Test Engineer for the AFCC Operational Test and Evaluation
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`Center as a Lieutenant. From 1990 to 1992 I served as a Captain at the
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`Information Systems Center, where I evaluated the effectiveness of wireless
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`LAN technology for use in mobile and portable military environments,
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`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.
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`5. After the Air Force, I was employed by Adroit Systems, where I
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`researched and analyzed wireless communications technologies for use in
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`U.S. Department of Defense airborne platforms. In addition, I was employed
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`by TASC, Inc., where I analyzed and developed communications systems
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`for various applications, such as data communications on submarines and
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`within electrical power plants, and designed and implemented databases for
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`various applications, such as narcotics tracking systems. In addition, I was
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`employed by Monarch Marking Systems, where I designed and developed
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`wireless middleware that coordinated communications among various
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`systems components, such as bar code scanners, printers and application
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`servers.
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`6. As a consultant for Wireless-Nets, Ltd., I have designed and
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`implemented wireless systems for various applications. For example, I
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`designed and implemented a wireless system that includes a transmitting
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`device with a keypad, joystick or other input device that would generate a
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`code indicating actuation of the input device and transmit the code to a
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`receiver. The receiver would decode the code and generate and transmit
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`commands to control various other devices.
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`7.
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`I have authored over a dozen books on mobile and wireless topics,
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`including Designing and Deploying 802.11n Wireless Networks (Cisco
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`Press), Implementing 802.1X Security Solutions (Wiley), Wireless
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`Networking Handbook (New Riders) and Network Re-engineering
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`(McGraw- Hill).
`
`8.
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`I have been an active participant within IEEE standards
`
`organizations, such as the IEEE 802.11 Working Group, and the Wi-Fi
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`Alliance and have served as Chairman of the IEEE Computer Society,
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`Dayton Section, and various conferences.
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`9. A copy of my latest curriculum vitae (C.V.) is attached as
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`Appendix A.
`
`
`Status as Independent Expert Witness
`
`
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`10.
`
`I have been retained in this matter by Universal Remote Control,
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`Inc. ("Petitioner" or "URC") to provide an analysis of the scope and content
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`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
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`Patent. In particular, my analysis relates only to claims 2, 5 and 22-23. I
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`have also been retained to provide analysis regarding what a person of
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`Universal Remote Control Exhibit 1010: Page 4
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`ordinary skill in the art related to universal remote control devices would
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`have understood at the time of the earliest application underlying the '642
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`patent.
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`11.
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`I am being compensated at the rate of $300 per hour for my work.
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`My fee is not contingent on the outcome of any matter or on any of the
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`technical positions I explain in this declaration. I have no financial interest in
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`Petitioner.
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`12.
`
`I have been informed that UEI Cayman Inc. (hereinafter referred to
`
`as "Patent Owner") is asserting the '642 Patent against Petitioner URC. I
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`have no financial interest in the Patent Owner or the '642 patent nor to my
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`recollection have I ever had any contact with the Patent Owner, or the
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`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
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`electronics. I have been informed that the relevant timeframe runs from
`
`around 1986 and through 2003.
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`16. As described in above, I have extensive experience in the relevant
`
`field, including experience relating to wireless communications and
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`coordination of system components. Based on my experience, I have an
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`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
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`assign a routine task with reasonable confidence that the task would be
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`successfully carried out. I have been informed that the level of skill in the art
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`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,
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`telecommunications, or computer science (or equivalent degree) with two
`
`years experience in the communications industry and was aware of
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`programmable universal remote controls, including techniques for receiving
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`and decoding remote control transmissions as well as encoding and
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`Universal Remote Control Exhibit 1010: Page 6
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`transmitting remote control transmissions and was aware of basic database
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`theory for storing data.
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`18. Based on my experience, I have an understanding of the
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`capabilities of a person of ordinary skill in the relevant field. I have
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`supervised, directed, and instructed many such persons over the course of
`
`my career.
`
`Background of the Technology
`
`
`
`19.
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`In general, remote controls were developed to control electronic
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`home appliances, such as televisions, stereos, and related devices. More
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`recently, home automation systems have been developed to control
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`additional components in the home including lighting, thermostats and the
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`like. Remote controls utilize a variety of different schemes for
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`encoding/decoding and transmitting/receiving data for typically wireless
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`transmission to one or more electronic appliances. These appliances
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`include receiving components that receive the transmission and decode the
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`data transmitted therewith to perform the desired functions indicated by the
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`data.
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`20. Programmable universal remote controls allow a user to aggregate
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`the command functions performed by multiple remote controls into a single
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`Universal Remote Control Exhibit 1010: Page 7
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`device. A universal remote control, once configured for, or matched to, a
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`user's equipment, can be used to control several different devices. There are
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`several different known approaches to providing a single remote control that
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`can control multiple devices or components.
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`21. Some universal remote controls include a learning mode in which
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`the remote control actually learns to reproduce command codes that it learns
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`from the dedicated remote control for a desired device. Such universal
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`remote controls usually store multiple command sets related to the multiple
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`types of components that are controlled, i.e. TV, DVD player, set top box
`
`etc.
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`22. Programmable remote controls typically store multiple command
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`sets for each type of device and allow a user to program, or match, the
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`remote control to the particular components that the user wishes to control.
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`This programming is typically accomplished via manipulation of buttons on
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`the remote and selection of commands appropriate for the device.
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`23. As illustrated by the references discussed below, a person of
`
`ordinary skill in the art, in the relevant timeframe, was aware of encoding
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`and transmitting command codes to target devices, receiving command
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`codes and decoding the command codes to provide a desired function. In
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`addition, it was well known to maintain a library or collection of command
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`Universal Remote Control Exhibit 1010: Page 8
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`sets corresponding to different components and selecting and providing
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`desired codes to a target device.
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`The '642 Patent
`
`24.
`
` The '642 patent relates to a system in which an indicator signal is
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`transmitted from a remote control device and a code generator identifies a
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`codeset usable to communicate with a selected consumer device. The
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`indicator signal includes an indication of a pressed key on the remote
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`control. The pressed key corresponds to a function of the selected consumer
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`device. Based on the identified codeset and the key indication, the code
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`generator device provides a key code and modulates it onto a carrier signal
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`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
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`electronic consumer device, or appliance by transmitting coded signals to the
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`target applicant. These signals are commonly transmitted wirelessly, for
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`example using infrared light or radio waves. The signals contain codes of a
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`codeset associated with the particular device. Typically, each code
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`corresponds to a function of the selected electronic device, including, but not
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`limited to power on, power off, volume up, volume down, play, stop, select,
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`channel up, channel down, etc. Typically, manufacturers use different
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`codesets for communicating between appliances and their associated remote
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`Universal Remote Control Exhibit 1010: Page 9
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`control to avoid the possibility that a remote control signal intended for one
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`device will not result in operation of a different device. Codesets may differ
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`from each other in the specific bit patterns or codes assigned to various
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`functions of the device and/or by the timing information used to describe
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`how the key codes are modulated onto carrier signals for transmission.
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`See’642 patent at col. 1, ll. 21-38.
`
`25. As noted above, consumers often prefer to have a single remote
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`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
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`typically match a particular codeset in the remote control to a particular
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`device by activation of one or more buttons on the remote control and results
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`in transmission of coded commands to the target appliance.
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`26.
`
` Several references that were published and/or well known prior to
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`the filing of the ‘642 patent, however, disclose a system in which
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`transmissions from a remote control are received, associated with a
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`command, and modulated onto a carrier for transmission to a target device as
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`well as the other features required by claims 2, 5 and 22-23 of the ‘642
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`patent.
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`Universal Remote Control Exhibit 1010: Page 10
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`27. The '642 patent issued from U.S. Patent Application No.
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`10/737,029 (the “'029 application”), filed on December 16, 2003. I am
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`informed that no claim to an earlier priority date has been made with respect
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`to the ‘642 patent.
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`Claim Interpretation
`
`28.
`
`In proceedings before the USPTO, I understand that the claims of
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`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
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`
`
`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.
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`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
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`reference expressly or inherently. I understand that an anticipation analysis
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`involves a consideration of (1) the scope and content of the prior art; (2) the
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`differences between the claimed inventions and the prior art; and (3) the
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`level of ordinary skill in the pertinent art.
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`31.
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`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
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`involves a consideration of (1) the scope and content of the prior art; (2) the
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`differences between the claimed inventions and the prior art; (3) the level of
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`ordinary skill in the pertinent art; and (4) secondary considerations of non-
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`obviousness.
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`32. My analysis of these considerations is set forth in the following
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`sections.
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`The ‘534 patent teaches all elements recited by claims 2 and
`5 of the '642 patent.
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`
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`33. U.S. Patent No. 5,081,534 to Geiger et al. (the “‘534 patent") was
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`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
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`transmitter 3 (remote control), that is associated with a television receiver 1.
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`The remote control includes “keys for controlling various functions of the
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`television receiver 1 and also various functions of one or more peripheral
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`devices, such as the video recorder 4.” See ’534 patent at col. 3, ll. 50-55;
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`Fig. 1. The ‘534 patent also discloses that “…when the remote control
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`signal for a particular function of the peripheral device is received from a
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`‘unified’ remote control transmitter supplied by the manufacturer of the
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`television receiver, the television receiver automatically converts the code
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`(which is not suitable for the peripheral device) of the received remote
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`control signal into a new code…” Id. at col. 2, ll. 31-38. The ‘’534 patent
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`further disclose that after conversion, “a correspondingly coded remote
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`control signal is formed and coupled to the recorder 2 via the control path 5
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`and initiates the desired PLAY function there.” Id. at col. 4, ll. 54-57.
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`Basically, that is the purported invention of the ‘468 patent.
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`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
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`
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`35.
`
`In my opinion, the '534 patent discloses a method by which the
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`Universal Remote Control Exhibit 1010: Page 13
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`system disclosed therein operates. See '534 patent, Abstract.
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`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
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`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
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`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
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`acknowledged in the ‘642 patent itself. See ‘642 patent at col. 4, ll. 34-38.
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`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
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`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
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`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.
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`42. Further, turning on the power of a peripheral device, such as a
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`video recorder 2, is necessary in order to operate the video recorder at all.
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`Universal Remote Control Exhibit 1010: Page 15
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`Peripheral devices such as video recorders would typically not be left on
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`after use, and thus, transmitting a power on signal to the television received
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`1 from the remote control 3 to turn the video recorder on would have been a
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`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
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`‘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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`Universal Remote Control Exhibit 1010: Page 16
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`electronic consumer device.” See ‘642 patent at col. 1, ll. 34-36. That is, the
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`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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`Universal Remote Control Exhibit 1010: Page 17
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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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`Universal Remote Control Exhibit 1010: Page 18
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`for remotely controlling associated modules with the capability of
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`automatically determining the remote control codes of the associated
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`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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`Universal Remote Control Exhibit 1010: Page 19
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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
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`remote-control transmitter 108 to energize and tune the cable box 24 and
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`T.V.).
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`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
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`Claim 5
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`
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`56. Claim 5 depends on claim 2 and the ‘282 patent discloses all of the
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`features of claim 2, as noted above. As discussed above, turning on the
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`power of a peripheral device is necessary in order to operate the peripheral
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`device. Peripheral devices would typically not be left on after use, and thus,
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`transmitting a power on signal from the remote control 3 to turn the
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`peripheral device on would have been a common and necessary step in the
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`system of the ’282 patent. In addition, the ‘282 patent discloses using an
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`Universal Remote Control Exhibit 1010: Page 20
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`infrared transmitter to “energize and tune the cable box 24 and T.V.” ‘282
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`patent at col. 2,ll. 42-49. Energizing these devices means turning them on,
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`such that a power on code or command is transmitted to the cable box and
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`TV from the control unit 100 to turn them on.
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`Claim 22
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`57. As noted above, claim 22 depends on claim and, the ‘282 patent
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`discloses all of the features of claim 2. As further noted above, ‘642 patent
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`concedes that a key code that includes a binary number as required by claim
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`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
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`the system of the ‘282 patent and all of the features of claim 22 are disclosed
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`by the ‘282 patent in combination with the admitted prior art in the ‘642
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`patent.
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`Claim 23
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`58. Claim 23 depends on claim 2, and the ‘282 patent discloses all of
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`the features of claim 2 as noted above. In addition as noted above with
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`respect to the ‘534 patent, the ‘642 patent makes clear that the use of a
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`binary number in the key code, along with timing information was well
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`known in the art and that the use of timing information to modulate code
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`data onto a carrier signal was also well known and necessary. The ‘192
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`publication also discloses these features such that one skilled in the art
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`would have readily used a code that included a binary number and timing
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`information use to modulate the code onto the carrier signal, and the ‘282
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`patent in combination with the admitted prior art of the ‘642 patent and/or
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`the ‘192 Publication discloses all the features of claim 23.
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`Niles discloses all of the limitations of claim 2 of the ‘642 Patent
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`59. Niles was published in April of 2002, more than a year prior to the
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`filing of the ‘642 patent.
`
`60. Niles discloses a system including “an ergonomically designed RF
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`(radio frequency) Tabletop Remote Control and an ‘intelligent’ Main System
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`Unit (MSU).” Niles at p. 1. Niles discloses that the “Main System Unit is
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`the ‘brain’ of the IntelliControl system. Once a RF command is issued from
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`the Tabletop Remote, the MSU processes the command and controls all
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`functions of the system.” Id. at p.4. The Main System Unit also includes
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`“twelve IR Flasher Outputs” that “issue IR codes to IR controlled
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`components.” Id. at p.5.
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`61.
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`It is my opinion that Niles discloses all of the features of claim 2 of
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`the ‘642 patent.
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`Claim 2
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`62.
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`In my opinion, Niles discloses a system that is operated according
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`to a method.
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`63.
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`In my opinion, Niles discloses receiving a key indicator signal
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`indicating a key actuated by a user. See Niles at pp. 1, 4 (an RF command
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`(key indicator signal) is issued from the remote and received by the Main
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`System Unit which controls all functions of the system).
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`64.
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`In my opinion, Niles discloses generating a key code based on the
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`received indicator signal. See Niles at p. 23 (when a ‘Function Key’ is
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`pressed, the system checks to see if a ‘Function Key Sequence’ has been
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`programmed to be triggered by the selected Function Key and if so it will
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`initiate the sequence).
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`65.
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`In my opinion, Niles discloses modulating the key code on a
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`carrier signal. See Niles at p. 16 (all audio/video components in the system
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`must be remote-controlled by infrared (IR) and the system is designed to be
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`compatible with virtually any brand of equipment that transmits IR
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`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
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`requires modulation of the codes onto a carrier signal.
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`66.
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`In my opinion, Niles discloses transmitting codes to consumer
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`devices. See Niles at p. 5 (IR Flasher Outputs of the MSU issue IR codes to
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`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
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`67. Claim 5 depends on claim 2, and Niles discloses all of the features
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`of claim 2 as noted above. Niles further discloses that it “has compiled an
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`extensive IR Library of over 175 different products from most of the major
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`manufacturers (including many direct access and separate ON/Off codes).”
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`See Niles at p. 16. In view of this disclosure, one of ordinary skill in the art
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`would readily actuate a power on button on the remote to turn one of the
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`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,
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`transmitting a power on signal from the remote control to the MSU to turn
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`the peripheral device on would have been a common and necessary step in
`
`the system of Niles.
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`68. Further as noted above, the ‘534 patent discloses this limitation.
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`See ‘534 patent at col. 3, ll. 19-20 and col. 4, ll. 46-56. Thus, Niles and/or
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`the '534 patent disclose the features of claim 5.
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`
`
` Claims 22
`
`69. Claim 22 depends on