IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Certificate of Filing: I hereby certify that his correspondence is being electronically filed with the USPTO on this
`14th day of October, 2014.
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`By: /Eric J. Maiers/
`Eric J. Maiers
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`Applicant:
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`Case No.:
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`Filing Date:
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`Patent No.:
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`Title:
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`Mui
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`IPR2014-01082
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`12/16/2003
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`7,589,642
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`Relaying Key Code
`)
`Signals Through a
`Remote Control Device )
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`Universal Remote Control, Inc.
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`v.
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`UEI Cayman, Inc.
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`Trial Paralegal: Amy Kattula
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`Attny Doc.: 059489.143700
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`PRELIMINARY RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.107
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`

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`I.
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................ 1
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`II. CLAIM CONSTRUCTION .............................................................................. 3
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`III. THE PETITION DOES NOT MEET THE STATUTORY ............................. 5
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`A. Ground 1: Geiger Does Not Anticipate Or Render Obvious
`Claims 2 and/or 5. ................................................................................. 9
`
`B.
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`C.
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`1.
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`2.
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`Geiger Does Not Anticipate Claims 2 And/Or 5 Of The
`‘642 Patent. ................................................................................. 9
`Geiger Does Not Render Obvious Claims 2 And/Or 5.............13
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`Ground 2: Geiger In View Of The Allegedly Admitted Prior
`Art And Teskey Do Not Render Obvious Claims 22 And/Or 23. ......15
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`Ground 3: Levine Does Not Anticipated Or Render Obvious
`Claim 2. ...............................................................................................19
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`1.
`2.
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`Levine Does Not Anticipate Claim 2 Of The ‘642 Patent. .......19
`Levine Does Not Render Obvious Claim 2. .............................22
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`D. Ground 4: Levine, Alone, Or In View Of The Allegedly
`Admitted Prior Art And Teskey Do Not Anticipate Or Render
`Obvious Claims 5, 22, And/Or 23. .....................................................23
`
`1.
`2.
`
`Levine Does Not Anticipate Claims 5, 22, And/Or 23. ............23
`Levine In View of the Allegedly Admitted Prior Art And
`Teskey Does Not Render Obvious Claims 22 And/Or 23
`Of The ‘642 Patent. ...................................................................23
`
`E.
`
`Ground 5: Niles Does Not Anticipate Or Render Obvious Claim
`2. ..........................................................................................................27
`
`1.
`2.
`
`Niles Does Not Anticipate Claim 2 Of The ‘642 Patent. .........27
`Niles Does Not Render Obvious Claim 2 Of The ‘642
`Patent. ........................................................................................29
`
`F.
`
`Ground 6: Niles, Alone, Or In View Of Geiger, The Allegedly
`Admitted Prior Art, And Teskey Do Not Anticipate Or Render
`Obvious Claims 5, 22, And/Or 23. ......................................................30
`i
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`

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`IPR2014-01082
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`1.
`
`2.
`
`Niles, Alone, Does Not Anticipate Or Render Obvious
`Claims 5, 22, And/Or 23 Of The ‘642 Patent. ..........................30
`Niles In View Of Geiger, The Allegedly Admitted Prior
`Art, And Teskey Does Not Render Obvious Claims 5, 22,
`And/Or 23. ................................................................................31
`
`i.
`
`ii.
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`Niles in view of Geiger does not render obvious
`Claim 5. ...........................................................................31
`Niles in view of The Allegedly Admitted Prior Art
`and Teskey does not render obvious Claims 22
`and/or 23. ........................................................................33
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`G. Ground 7: Sato Does Not Anticipate Or Render Obvious Claim
`2. ..........................................................................................................37
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`1.
`2.
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`Sato Does Not Anticipate Claim 2 Of The ‘642 Patent. ...........37
`Sato Does Not Render Obvious Claim 2 Of The ‘642
`Patent. ........................................................................................41
`
`H. Ground 8: Sato, Alone, Or In View Of Geiger, The Allegedly
`Admitted Prior Art And Teskey Does Not Anticipate Or Render
`Obvious Claims 5, 22, And/Or 23. ......................................................41
`
`1.
`
`2.
`
`Sato, Alone, Does Not Anticipate or Render Obvious
`Claims 5, 22, And/Or 23 Of The ‘642 Patent. ..........................42
`Sato In View Of Geiger, The Allegedly Admitted Prior
`Art, And Teskey Does Not Render Obvious Claims 5, 22,
`And/Or 23. ................................................................................43
`
`i.
`
`ii.
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`Sato in view of Geiger does not render obvious
`Claim 5. ...........................................................................43
`Sato in view of The Allegedly Admitted Prior Art
`and Teskey does not render obvious Claims 22
`and/or 23. ........................................................................44
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`I.
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`Ground 9: Sasaki Does Not Anticipate Or Render Obvious
`Claims 2 And/Or 5. .............................................................................48
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`1.
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`2.
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`Sasaki Does Not Anticipate Claims 2 And/Or 5 Of The
`‘642 Patent. ...............................................................................48
`Sasaki Does Not Render Obvious Claims 2 And/Or 5. ............50
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`ii
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`IPR2014-01082
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`J.
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`Ground 10: Sasaki In View Of The Allegedly Admitted Prior
`Art And Teskey Do Not Render Obvious Claims 22 And/Or 23. ......50
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`K. Ground 11: Cohen Does Not Anticipate Or Render Obvious
`Claims 2 And/Or 5. .............................................................................54
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`1.
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`2.
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`Cohen Does Not Anticipate Claims 2 And/Or 5 Of The
`‘642 Patent. ...............................................................................54
`Cohen Does Not Render Obvious Claims 2 And/Or 5. ............56
`
`L.
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`Ground 12: Cohen In View Of The Allegedly Admitted Prior
`Art And Teskey Do Not Render Obvious Claims 22 And/Or 23. ......57
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`IV. CONCLUSION ...............................................................................................60
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`
`
`iii
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`TABLE OF AUTHORITIES
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`Page(s)
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`Federal Cases
`In re Am. Acad. Of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 3
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .........................................................................................passim
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ...................................................................... 11, 22
`Universal Elecs., Inc. v. Peel Techs., Inc.,
`No. 8:13-cv-01484 (C.D. Cal., filed Sept. 23, 2013)...................................passim
`
`P.T.A.B. Decisions
`3D-Matrix, Ltd. v. Menicon Co.,
`Case IPR2014-00398, Paper No. 11 (P.T.A.B. Aug. 1, 2014) ............... 11, 12, 22
`eBay, Inc. v. Paid, Inc.,
`CBM2014-00125, Paper 15 (P.T.A.B. Sept. 30, 2014) ...................................... 14
`Edmund Optics, Inc. v. Semrock, Inc.,
`Case IPR2014-00583, Paper 9 (P.T.A.B. Sept. 19, 2014) ...........................passim
`Eizo Corp. v. Barco N.V.,
`IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014) .................................... 13, 14
`Mohawk Resources Ltd. v. Vehicle Service Group, LLC,
`Case IPR2014-00464, Paper 10 (P.T.A.B. Aug. 29, 2014) .............................. 6, 8
`Moses Lake Indus., Inc. v. Enthone, Inc.,
`IPR2014-00243, Paper 6 (P.T.A.B. June 18, 2014) ........................................... 14
`Moses Lake Indus., Inc. v. Enthone, Inc.,
`IPR2014-00246, Paper 6 (P.T.A.B. June 18, 2014) ........................................... 14
`Zetec, Inc. v. Westinghouse Electric Co.,
`LLC, Case IPR2014-00384, Paper 10 (P.T.A.B. July 23, 2014)...................... 7, 8
`
`iv
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`

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`IPR2014-01082
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`Federal Statutes
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`35 U.S.C. § 102 .................................................................................................. 31, 42
`35 U.S.C. § 103 .................................................................................................. 31, 42
`35 U.S.C. § 311 .......................................................................................................... 5
`35 U.S.C. § 313 ...................................................................................................... 1, 5
`35 U.S.C. § 314(a) ..................................................................................................... 5
`
`Regulations
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`37 C.F.R. § 42.65(a) ............................................................................... 17, 25, 29, 34
`37 C.F.R. § 42.100(b) ................................................................................................ 3
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`77 Fed. Reg. 48,756 48,763 (Aug. 14, 2012) ............................................................ 6
`MPEP § 2111 ............................................................................................................. 3
`
`
`v
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`

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`EXHIBIT LIST
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`2001. Claim Construction Order from Universal Elecs., Inc. v. Peel
`Techs., Inc., No. 8:13-cv-01484 (C.D. Cal.)
`
`
`2002. Mohawk Resources Ltd. v. Vehicle Service Group, LLC,
` Case IPR2014-00464, Paper 10 (P.T.A.B. Aug. 29, 2014)
`
`
`2003. Zetec, Inc. v. Westinghouse Electric Co.,
` LLC, Case IPR2014-00384, Paper 10 (P.T.A.B. July 23, 2014)
`
`
`2004. Edmund Optics, Inc. v. Semrock, Inc.,
` Case IPR2014-00583, Paper 9 (P.T.A.B. Sept. 19, 2014)
`
`
`2005. 3D-Matrix, Ltd. v. Menicon Co.,
` Case IPR2014-00398, Paper No. 11 (P.T.A.B. Aug. 1, 2014)
`
`
`2006. Eizo Corp. v. Barco N.V.,
` IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014)
`
`
`2007. Moses Lake Indus., Inc. v. Enthone, Inc.,
` IPR2014-00243, Paper 6 (P.T.A.B. June 18, 2014)
`
`
`2008. Moses Lake Indus., Inc. v. Enthone, Inc.,
` IPR2014-00246, Paper 6 (P.T.A.B. June 18, 2014)
`
`
`2009. eBay, Inc. v. Paid, Inc.,
` CBM2014-00125, Paper 15 (P.T.A.B. Sept. 30, 2014)
`
`
`
`vi
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`

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`
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`UEI Cayman, Inc. (“UEI” or “Patent Owner”), respectfully submits this
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`Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107
`
`in response to the Petition for Inter Partes Review of Claims 2, 5, 22, and 23 of
`
`U.S. Patent No. 7,589,642 (the “‘642 patent”) filed by Universal Remote Control,
`
`Inc. (“URC” or “Petitioner”). This Preliminary Response is timely under 37
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`C.F.R. § 42.107(b) because UEI filed this Response within three months of July
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`14, 2014, the mailing date of the Notice of Filing Date Accorded to Petition and
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`Time for Filing Patent Owner Preliminary Response (Paper 3).
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`I.
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`INTRODUCTION
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`Petitioner alleges that various claims of the ‘642 patent are anticipated or are
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`rendered obvious by each of (1) U.S. Patent No. 5,081,534 (“Geiger”), (2) U.S.
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`Patent No. 5,365,282 (“Levine”), (3) IntelliControl Reference Manual, Version 8.1
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`(“Niles”), (4) U.S. Patent Publication No. 2002/0047944 (“Sato”), (5) Japanese
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`Patent Publication H07-336779 (“Sasaki”), and (6) U.S. Patent No. 5,235,414
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`(“Cohen”), comprising at least eighteen separate alleged grounds of invalidity.
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`Petitioner further alleges that various claims of the ‘642 patent are rendered
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`obvious by at least the following combinations of prior art, although Petitioner
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`does not always make clear which combinations of prior art on which it intends to
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`rely: (1) Geiger in view of the allegedly1 admitted prior art and International Patent
`
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`1 Patent Owner disagrees that what Petitioner refers to as “admitted prior art,” is, indeed,
`admitted prior art, as discussed in Section III., infra.
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`IPR2014-01082
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`Publication No. WO99/33192 (“Teskey”); (2) Levine in view of the allegedly
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`admitted prior art and Teskey; (3) Niles in view of the allegedly admitted prior art
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`and Teskey; (4) Sato in view of Geiger, the allegedly admitted prior art and
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`Teskey; (5) Sasaki in view of the allegedly admitted prior art and Teskey; and (6)
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`Cohen in view of Teskey, comprising at least an additional six alleged grounds of
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`invalidity. In total, Petitioner has alleged at least twenty four separate grounds for
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`invalidity in a single IPR Petition.
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`The Board should decline to institute inter partes review proceedings based
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`on each of the above grounds because each suffers from one or more fatal defects.
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`For example, rather than specifically identify where each limitation of each
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`challenged claim can be found in each of its dual anticipatory / single-reference
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`obviousness grounds, Petitioner simply waives its hand over the references and
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`concludes without support that the limitations are either expressly, inherently,
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`and/or obviously disclosed. Further, at least nineteen of Petitioner’s bases rely
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`upon references that do not disclose the “modulating said key code onto a carrier
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`signal” limitation of the only independent claim (Claim 2) for which Petitioner
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`seeks inter partes review. Likewise, many of Petitioner’s cited references fail to
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`disclose the “keystroke indicator signal” limitation of independent Claim 2.
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`Moreover, none of Petitioner’s obviousness combinations identify any motivation
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`to combine the references by one of ordinary skill in the art. Indeed, Petitioner
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`2
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`IPR2014-01082
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`never mentions, let alone applies, the Graham obviousness test. The Petition’s
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`shotgun approach reveals its inability to present a single cogent and complete basis
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`for invalidity that meets the requirements for inter partes review. For these
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`reasons, Petitioner has not met its burden to demonstrate a reasonable likelihood
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`that it can demonstrate that Claims 2, 5, 22, and/or 23 are invalid such that the
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`Board should decline to institute inter partes review.
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`II.
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` CLAIM CONSTRUCTION
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`At the outset, Patent Owner agrees with Petitioner that because the ‘642
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`patent has not expired, the Board must construe its claims under the “broadest
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`reasonable interpretation” standard. In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d
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`1359, 1364 (Fed. Cir. 2004); MPEP § 2111; 37 C.F.R. § 42.100(b). Petitioner does
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`not propose any claim constructions for any challenged claims of the ‘642 patent.
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`However, the Board should construe the claim terms “keystroke indicator signal”
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`and “key code.”
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`Claim 2 of the ‘642 patent reads as follows: “A method comprising: (a)
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`receiving a keystroke indicator signal from a remote control device, wherein the
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`keystroke indicator signal indicates a key on said remote control device that a user
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`has selected, (b) generating a key code within a key code generator device using
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`the keystroke indic[a]tor signal; (c) modulating said key code onto a carrier signal,
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`thereby generating a key code signal; and (d) transmitting said key code signal
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`3
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`

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`IPR2014-01082
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`from said key code generator device to an electronic consumer device. (‘642
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`patent at Claim 2.) Briefly, Claim 2 of the ‘642 patent discloses a method whereby
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`a key code generator device receives a keystroke indicator signal that indicates a
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`key pressed on a remote control. The key code generator device uses the keystroke
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`indicator signal to generate a distinct key code. The key code generator device
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`modulates the key code onto a carrier signal and then transmits the carrier signal to
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`operate an electronic consumer device. (Id.) The claimed advantage of the ‘642
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`patent is that the remote control need only store a single set of codes (such that it
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`can be made inexpensively by using only a small amount of memory), yet still can
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`control thousands of different devices with unique codesets. (‘642 Patent 1:39-62,
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`9:15-22.)
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`
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`In Universal Elecs., Inc. v. Peel Techs., Inc., the Central District of
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`California construed “keystroke indicator signal” as “a signal, distinct from a key
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`code, corresponding to a pressed key [on a remote control]” and “key code” as “a
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`code corresponding to the function of an electronic device, optionally including
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`timing information.” (Claim Construction Order from Universal Elecs., Inc. v.
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`Peel Techs., Inc., No. 8:13-cv-01484 (C.D. Cal.) (“Peel CC Order”) (Ex. 2001) at
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`42, 45.) As the Peel Court concluded, “UEI’s statements in the prosecution history
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`further narrowed the claims” of the ‘642 patent. To overcome a prior art rejection
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`…, UEI argued that the Examiner conflated the keystroke indicator signal with the
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`4
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`IPR2014-01082
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`key code signal. … UEI’s amendment further confirms that ‘keystroke indicator
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`signal’ is different than a ‘key code.’ UEI amended asserted claim 1 and argued
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`that the amendment ‘overcomes the new rejection … explicitly to limit the scope
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`of the term ‘keystroke indicator signal’ to indicate a key on a remote control device
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`that a user has selected….’” (Id. at 44.) Although UEI sought different
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`constructions during the Peel claim construction proceedings, it believes the Peel
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`Court’s constructions to be correct under the broadest reasonable interpretation
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`standard applicable here. Thus, the Board should adopt the Peel Court’s
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`construction of those terms.
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`III. THE PETITION DOES NOT MEET THE STATUTORY
`REQUIREMENT OF 35 U.S.C. § 314(a)
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`“The Director may not authorize an inter partes review to be instituted
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`unless the Director determines that the information presented in the petition filed
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`under section 311 and any response filed under section 313 shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
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`the claims challenged in the petition.” 35 U.S.C. § 314(a). For at least the reasons
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`set forth below, no reasonable likelihood exists that the Petitioner will prevail in
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`showing that any one of Claims 2, 5, 22, and/or 23 of the ’642 Patent is
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`unpatentable.
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`Petitioner’s shot-gun approach to its Petition fails to meet the Board’s
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`requirements, particularly with respect to Petitioner’s thinly-supported obviousness
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`5
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`IPR2014-01082
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`combinations and dual anticipatory / single-reference obviousness grounds.
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`“Although the parties are given wide latitude in how they present their cases, the
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`Board’s experience is that the presentation of an overwhelming number of issues
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`tends to detract from the argument being presented …. Thus, parties should …
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`focus on concise, well-organized, easy-to-follow argument supported by readily
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`identifiable evidence of record.” Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756 48,763 (Aug. 14, 2012).
`
`A Petitioner cannot simply conclude without support that to the extent an
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`allegedly anticipatory prior art reference does not disclose a particular claim
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`limitation, one of skill in the art would know to supply that limitation such that the
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`single-reference renders obvious the challenged claim. Mohawk Resources Ltd. V.
`
`Vehicle Service Group, LLC, Case IPR2014-00464, Paper 10 (Aug. 29, 2014) (Ex.
`
`2002) (“The crux of Petitioner’s argument is that ‘to the extent that Kogyo is seen
`
`as missing any element of any of these claims, each claim still would have been
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`obvious to one of ordinary skill in the art as falling within that level of skill when
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`combined with the teaching of Kogyo. … The petition, however, does not identify
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`any particular limitation of any particular claim that might be missing from Kogyo,
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`nor does it provie any details as to why a person of ordinary skill in the art would
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`have combined any missing element with the teaching of Kogyo. … Without any
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`specific explanation regarding the alleged obviousness of these claims, we are
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`6
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`IPR2014-01082
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`unable to conclude that the information presented shows a reasonable likelihood
`
`that Petitioner would prevail….”).
`
`Likewise, the Board has previously held that a Petitioner who includes
`
`numerous obviousness combinations runs the risk of having its obviousness
`
`grounds rejected:
`
`[T]he Petition asserts a large number of grounds and presents
`underdeveloped arguments against each claim. Moreover, numerous
`grounds are presented and argued together in the Petition, thereby
`obfuscating the arguments as to each ground. … Moreover, under
`these circumstances, attempting to evaluate fully the numerous
`grounds and underdeveloped assertions in the Petition to determine
`whether Petitioner has shown that it would be likely to prevail in any
`unpatentability challenge would place a significant burden on the
`Board and contravene the efficient administration of the Office. …
`Therefore, we decline to expend our resources scouring the numerous
`grounds for one that demonstrates a reasonable likelihood that
`Petitioner would prevail in showing unpatentability of at least one of
`the claims challenged in the Petition…. Nor will we attempt to fit
`evidence together into a coherent explanation that supports an
`argument that demonstrates a reasonable likelihood that Petitioner
`would prevail.
`
`Zetec, Inc. v. Westinghouse Electric Co., LLC, Case IPR2014-00384, Paper 10
`
`(P.T.A.B. July 23, 2014) (Ex. 2003);
`
` Edmund asserts numerous grounds of obviousness over various
`combinations of 15 prior art references, and such grounds are
`characterized by multiple conjunctive and disjunctive “and/or”
`connectors that greatly multiple the total number of asserted grounds.
`The multiple conjunctive and disjunctive connectors significantly
`increases the total number of proposed obviousness challenges, while
`at the same time providing little supporting evidence and analysis for
`each of the proposed alternative obviousness challenges.
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`
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`7
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`IPR2014-01082
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`Edmund Optics, Inc. v. Semrock, Inc., Case IPR2014-00583, Paper 9 (P.T.A.B.
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`Sept. 19, 2014) (Ex. 2004).
`
`Here, the Petition suffers from the exact same shortcomings as the petitions
`
`filed in Mohawk, Zetec, and Edmund. Petitioner makes numerous dual anticipatory
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`/ single-reference obvious analyses without ever identifying how such references
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`fall short of the claimed invention. Moreover, the Petition frequently does not
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`even specify which prior art combinations it is asserting against which claims of
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`the ‘642 patent. Likewise, the Petition and the supporting Geier Declaration are
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`replete with “and/or” connectors that obfuscate the specific combinations of prior
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`art upon which Petitioner relies. Petitioner’s moving target approach to
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`identifying combinations, coupled with the sheer volume of combinations asserted,
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`has made it virtually impossible for Patent Owner to adequately respond to each of
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`the Petition’s alleged grounds while also complying with the 60-page limit. Patent
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`Owner is thus left with the Hobson’s choice of either presenting all of its
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`arguments with severe constraints on the extent to which it can develop those
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`arguments, or foregoing certain arguments in order to more fully develop others.
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`See Zetec, Case IPR2014-00384, Paper 10 at 14-15 (recognizing that a Petition
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`asserting a large number of grounds with underdeveloped arguments “place[d] a
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`significant and unfair burden on the Patent Owner to respond adequately” and
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`“necessitated” cursory responses from the patent owner). In view of the Petition’s
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`
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`8
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`IPR2014-01082
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`deficiencies, as more fully discussed herein, the Board should exercise its
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`discretion and not waste Board resources by instituting inter partes review based
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`on Petitioner’s “more is more” approach to its Petition.
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`A. Ground 1: Geiger Does Not Anticipate Or Render Obvious
`Claims 2 and/or 5.
`1. Geiger Does Not Anticipate Claims 2 And/Or 5 Of The ‘642
`Patent.
`
`Geiger does not anticipate independent Claim 2 because it does not disclose
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`a “keystroke indicator signal.” A “keystroke indicator signal” is “a signal, distinct
`
`from a key code, corresponding to a pressed key [on a remote control.]” (Peel CC
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`Order at 45.) A “key code” is “a code corresponding to the function of an
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`electronic device, optionally including timing information.” (Id. at (emphasis
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`added).) Petitioner relies on the following two passages from Geiger to meet the
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`“keystroke indicator signal” limitation:
`
`(1) “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,” and
`(2) “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 in to a new code….”
`
`(Pet. at 29 (emphasis added).) Neither of these passages demonstrates that the
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`signal sent Geiger’s remote control “correspond[s] to a pressed key.” Rather, these
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`
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`9
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`passages confirm that the signal sent from the remote control corresponds to a
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`function of a recipient electronic device, i.e. a key code. Mr. Geier alleges that “…
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`the ‘534 patent discloses receiving a keystroke indicator signal from a remote
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`control that indicates a key on the control that is selected by the user. See ‘534
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`patent at col. 3, ll.63-64 (remote control 3 transmits a signal e.g. PLAY upon
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`activation of the play key, this signal is received at the television receiver 1.).”
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`(Geier Decl. ¶ 36.) Petitioner’s supporting declaration likewise does not
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`demonstrate that Geiger discloses a keystroke indicator signal. Indeed, the
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`declaration’s citation Geiger does not even appear to match up with Mr. Geier’s
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`statements regarding the alleged disclosure of a “keystroke indicator signal.” At
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`most, Mr. Geier’s declaration establishes that the remote control transmits a signal
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`containing a “key code” corresponding to the function of a recipient device. Thus,
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`Geiger discloses, at most, the transmission of a “key code,” but not a “keystroke
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`indicator signal.”
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`Geiger also does not anticipate independent Claim 2 because it does not
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`disclose “modulating said key code onto a carrier signal, thereby generating a key
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`code signal.” Petitioner notes only that the “[t]ransmission of the code via an IR
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`link (see below) requires modulation of the code onto a carrier.” (Pet. at 30
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`(emphasis added).) Neither the Petition nor the Geier Declaration provide any
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`support for this statement of alleged inherency. (Id. (citing Geier Decl. ¶¶ 38-39.)
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`“To establish inherency, the extrinsic evidence must make clear that the
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`missing descriptive matter is necessarily present in the thing described in the
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`reference.” 3D-Matrix, Ltd. v. Menicon Co., Case IPR2014-00398, Paper No. 11
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`at 6 (P.T.A.B. Aug. 1, 2014) (Ex. 2005) (quoting In re Robertson, 169 F.3d 743,
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`745 (Fed. Cir. 1999)) (internal quotations omitted) (emphasis added). A showing
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`of inherency requires more than mere “probabilities or possibilities.” 3D-Matrix,
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`Case IPR2014-00398, Paper No. 11 at 6. The Board in 3-D Matrix found that the
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`petitioner’s inherency analysis was conclusory and lacked persuasive detail
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`because it did “not explain or support, with specific citations” why the limitation at
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`issue was inherently disclosed. Id. at 11.
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`According to Mr. Geier:
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`In my opinion, the ‘534 patent discloses modulating the
`38.
`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.
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`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 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.
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`(Ex. 1010 at ¶ 38-39.) These paragraphs do not establish that transmission via an
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`infra-red signal requires, i.e. inherently discloses, “modulating said key code onto
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`a carrier signal.” The fact that the ‘642 patent specification discloses IR
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`transmission via “modulating said key code onto a carrier signal”—which it must
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`do to provide written description and enablement support for the claim limitation—
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`does not mean that the ‘642 patent “acknowledges” that IR transmissions require
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`“modulating said key code onto a carrier signal,” as Mr. Geier assumes. Indeed,
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`nothing in the ‘642 patent suggests, must less conclusively demonstrates that
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`sending an IR transmission inherently involves modulating a key code onto a
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`carrier signal. (See ‘642 patent at 4:34-38.)
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`The petitioner in 3-D Matrix identified the specific limitations that were
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`allegedly inherently disclosed and provided conclusory explanations. Id. at 10-11.
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`Here, Petitioner takes the same approach. The Petition and the supporting Geier
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`Declaration do not provide any meaningful support that the “modulating”
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`limitation of Claim 2 is inherently disclosed by Geiger. (See generally Pet. at 31-
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`32; see also Geier Decl. at ¶ 41.) As a result, the Petition does not establish that
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`Geiger inherently discloses “modulating said key code onto a carrier signal” to
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`anticipate Claim 2 of the ‘642 patent.
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`Accordingly, Geiger does not anticipate Claim 2.
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`Geiger does not anticipate Claim 5 because it does not anticipate Claim 2,
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`from which Claim 5 depends.
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`Geiger does not anticipate Claim 5 for the additional reason that Petitioner
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`has not articulated a single, complete argument that Geiger inherently discloses
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`pressing a power on button to turn on a device. Again, the Petition and the
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`supporting Geier Declaration merely provide conclusory statements without any
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`meaningful support that the limitation of Claim 5 is inherently disclosed Geiger.
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`(See generally Pet. at 31-32; see also Geier Decl. at ¶ 41.) As a result, the Petition
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`fails to establish that Geiger inherently discloses pressing a power on button to turn
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`a device on to anticipate Claim 5 of the ‘642 patent.
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`2. Geiger Does Not Render Obvious Claims 2 And/Or 5.
`Petitioner’s claim that Geiger renders obvious Claim 5 of the ‘642 patent is
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`deficient because it does not provide any obviousness analysis, much less one that
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`complies with the Graham v. John Deere framework.2 The Supreme Court has
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`long held that obviousness is resolved on a number of factual determinations
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`“including (1) the scope and content of the prior art, (2) any differences between
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`the claimed subject matter and the prior art, and (3) the level of ordinary skill in the
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`art.” E.g., Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 at 29 (P.T.A.B.
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`July 23, 2014) (Ex. 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 17 – 18
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`(1966); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)).
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`2 Indeed, each of Petitioner’s obviousness analyses suffers from this same defect. Petitioner
`never sets forth a clear obviousness analysis such that Patent Owner or the Board can determine
`what Petitioner believes each of the references discloses, and, equally importantly, what they do
`not, as well as why one of ordinary skill in the art would be motivated to combine the references.
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`Petitions for inter partes reviews “must address the Graham factors.” Eizo
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`Corp., IPR2014-00358, Paper 11 at 29 – 30. For example, the Board faulted the
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`petitioner in Eizo Corp. for failing to identify the differences between the claimed
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`subject matter and the prior art. Id. at 29 – 30. In particular, the Board found
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`insufficient the petitioner’s “conclusory assertion” that “[t]