IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Request For Rehearing Pursuant To
`37 C.F.R. §42.71(d)(1)
`
`In re Patent of: Arling et al.
`
`Case No.: IPR2014-1084
`
`Patent No.: 7,126,468
`
`Filed: September 19, 2003
`
`Issued: October 24, 2006
`
`Assignee: Universal Electronics Inc.
`
`Title: SYSTEM AND METHOD FOR
`MONITORING REMOTE CONTROL
`TRANSMISSIONS
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`23rd day of January, 2015
`
`By: __/Jeannie Ngai/
`Jeannie Ngai
`
`{01704845.2}
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Request For Rehearing Pursuant To
`37 C.F.R. §42.71(d)(1)
`
`In re Patent of: Arling et al.
`
`Case No.: IPR2014-1084
`
`Patent No.: 7,126,468
`
`Filed: September 19, 2003
`
`Issued: October 24, 2006
`
`Assignee: Universal Electronics Inc.
`
`Title: SYSTEM AND METHOD FOR
`MONITORING REMOTE CONTROL
`TRANSMISSIONS
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`23rd day of January, 2015
`
`By: __/Jeannie Ngai/
`Jeannie Ngai
`
`{01704845.2}
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .........................................................................................1
`
`ARGUMENT..................................................................................................1
`A.
`Petitioner’s argument regarding the “determining” step of claim
`1 being anticipated by Cohen.............................................................1
`Petitioners argument that claims 29 and 46 are anticipated by
`Cohen ................................................................................................3
`
`B.
`
`III. CONCLUSION ..............................................................................................6
`
`{01704845.2}
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`- ii -
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`
`
`TABLE OF AUTHORITIES
`
`Regulations
`
`37 C.F.R. §42.71(d)(1) ..............................................................................................1
`
`{01704845.2}
`
`- iii -
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`
`
`EXHIBIT LIST
`
`1001.
`
`1002.
`
`U.S. Patent No. 7,126,468 (filed Sep. 19, 2003) to Arling et al.
`
`Prosecution history of U.S. Patent Application Serial No. 10/665,650,
`
`which matured into the '468 Patent.
`
`1003.
`
`U.S. Patent Publication No. 2001/0045819 (filed Mar. 12, 2001;
`
`published Nov. 29, 2001) to Harris et al.
`
`1004.
`
`"IntelliControl Reference Manual" Version. 8.1, April 2002 by Niles
`
`Audio Corporation.
`
`1005.
`
`U.S. Patent No. 5,235,414 (filed May 21, 1990; issued Aug. 10, 1993)
`
`to Cohen.
`
`1006.
`
`1007.
`
`Ron Karr, et al., CORE Reference Manual; CL9, ©1987 ("CORE").
`
`U.S. Patent No. 6,545,587 (filed Jan 13, 1999; issued Apr. 8, 2003) to
`
`Hatakeyama, et al.
`
`1008.
`
`Declaration of James T. Geier In Support of the Petition for Inter
`
`Partes Review of U.S. Patent No. 7,126,468.
`
`1009.
`
`Complaint for Patent Infringement in Universal Electronics, Inc. v.
`
`Universal Remote Control, Inc., Civil Action No. SACV 13-00984,
`
`dated June 28, 2013.
`
`1010.
`
`U.S. Patent No. 7,005,979 (filed Jun. 25, 2003; issued Feb. 28, 2006)
`
`to Haughawout et al.
`
`{01704845.2}
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`- iv -
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`
`
`Case No.: IPR2014-1084
`
`U.S. Patent No. 7,126,468
`
`Petitioner Universal Remote Control, Inc. ("Petitioner" or "URC") hereby
`
`requests rehearing of the Board’s January 9, 2015 Decision (“Paper 9” or “the
`
`Decision”) under 37 C.F.R. §42.71(d)(1). The present request is being timely filed
`
`in accordance with 37 C.F.R. §42.71(d)(1) within 14 days of the date of the
`
`Decision.
`
`I.
`
`INTRODUCTION
`
`Petitioner respectfully submits that the Board misapprehended or overlooked
`
`certain aspects of Petitioner’s arguments with respect to the invalidity of claims 1,
`
`2, 11, 29, and 46 of U.S. Patent No. 7,126,468 (“the ‘468 patent”). As
`
`demonstrated below, this resulted in the Board’s determination that there was no
`
`reasonable likelihood that claims 1, 2, 11, 29, and 46 are anticipated by U.S. Patent
`
`No. 5,235,414 to Cohen (“the ‘414 patent” or “Cohen”).
`
`II.
`
`ARGUMENT
`
`A.
`
`Petitioner’s argument regarding the “determining” step of
`
`claim 1 being anticipated by Cohen
`
`In the Decision, the Board concludes that Petitioner has not shown that
`
`“Cohen’s monitoring system determines if
`
`the transmission from the remote
`
`control is intended to command an operation of a target appliance, as required by
`
`claim 1.” See Decision, Paper 9, p. 10 (emphasis in original).
`
`In support of its
`
`position, the Board states, “[C]ohen’s IR decoder automatically translates the
`
`{01704845.2}
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`- 1 -
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`Case No.: IPR2014-1084
`
`U.S. Patent No. 7,126,468
`
`received remote control signal to a signal indicating the intended component and
`
`operation.” Id. Based on this, the Board concludes, “when Cohen’s decoder 52
`
`receives and translates the received signal, it appears that Cohen’s system simply
`
`‘assumes,’ rather than ‘determines,’ that the received signal is intended for a target
`
`appliance.” Id.
`
`Petitioner respectfully submits that the Board’s reasoning above appears to
`
`overlook the substance of the disclosure of Cohen cited by the Petitioner and relied
`
`on in the Petition to show that the “determining” step of claim 1 was disclosed in
`
`Cohen:
`
`The IR signal [received from the remote control] is changed to
`
`electrical impulses that IR decoder 52 [of monitor 34] translates to
`
`generate a signal indicating the component of the home entertainment
`
`center operated on and in what manner.”
`
`See Petition, Paper 1, p. 22.
`
`Petitioner submits that this portion of Cohen makes clear that no
`
`assumption is involved in its operation, as the Board suggests. The disclosure
`
`points out that the decoder 52 translates a signal to determine the component of the
`
`home entertainment system that
`
`is operated by that signal. That
`
`is, Cohen
`
`discloses identifying those components that are a part of the home entertainment
`
`system, and thus, are target appliances. The identification that takes place in
`
`{01704845.2}
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`- 2 -
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`
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`Case No.: IPR2014-1084
`
`U.S. Patent No. 7,126,468
`
`Cohen thus indicates that the component that is operated by the signal is a target
`
`appliance. If there is no identification, then the device that the signal is intended
`
`for is not a target. Thus, this identifying operation in Cohen is the “determining”
`
`step required by claim 1.
`
`The Board has not identified any other feature of claim 1 that is allegedly
`
`not disclosed by Cohen. As this feature is disclosed by Cohen for the reasons
`
`discussed above, and the Board has acknowledged that the remaining features of
`
`claim 1 are also disclosed by Cohen, Petitioner respectfully submits that claim 1 of
`
`the ‘207 patent is anticipated by Cohen.
`
`Dependent claims 2 and 11 depend on claim 1 and are believed to be
`
`anticipated by Cohen, as well, for the reasons clarified above as well as those set
`
`forth in the Petition at pages 24-25. See Petition, Paper 1, pp. 24-25. Accordingly,
`
`Petitioner respectfully submits that it is likely that it will succeed in invalidating
`
`claims 1, 2 and 11 of the ‘468 patent as anticipated by Cohen.
`
`B.
`
`Petitioner’s argument that claims 29 and 46 are anticipated
`
`by Cohen
`
`Claims 29 and 46 depend on claims 27 and 35. Petitioner appreciates the
`
`Board’s indication that inter partes review has been instituted with respect to both
`
`of the independent claims 27 and 35. See Decision, Paper 9, p. 17.
`
`{01704845.2}
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`- 3 -
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`
`
`Case No.: IPR2014-1084
`
`U.S. Patent No. 7,126,468
`
`Claims 29 and 46 further require that “the data is maintained within a state
`
`table.” See Exhibit 1001, claims 29 and 46. In the Decision, the Board finds that
`
`Petitioner has not shown that “Cohen’s log of channel selection information is
`
`stored in a table.” See Decision, Paper 9, p. 13.
`
`In light of this, the Board
`
`concluded that the Petition did not show a reasonable likelihood that Petitioner
`
`would prevail in establishing that claims 29 and 46 are anticipated by Cohen. Id.
`
`Petitioner respectfully submits that the Board’s Decision misapprehends its
`
`argument that Cohen discloses the required “state tables” of these claims. As is
`
`explained at page 10 of the Petition, the phrase “state table” when read in light of
`
`the specification of the ‘468 patent is an association of one or more functions with
`
`corresponding state data. See Petition, Paper 1, pp. 10-11. Figure 4 of the ‘468
`
`patent illustrates an exemplary state table with various functions of a device
`
`associated with data indicating the state thereof, such as “on,” off,” and so forth.
`
`See Exhibit 1001, Figure 4. Figure 4 of the ‘468 patent is reproduced below.
`
`{01704845.2}
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`- 4 -
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`
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`Case No.: IPR2014-1084
`
`U.S. Patent No. 7,126,468
`
`Figure 4 is described in the ‘468 patent as “an exemplary set of state tables.” Id.
`
`at Col. 2, ll. 31-32. As was pointed out in the Petition, the ‘468 patent also makes
`
`clear that the state table of Figure 4 is stored in non-volatile read/write memory 56.
`
`See Petition, Paper 1, pp. 25, and Exhibit 1001, Col. 4, ll. 64-66.
`
`In the Decision, the Board does not construe the term “state tables,” noting
`
`that it agrees with Patent Owner “to the extent Petitioner argues a ‘state table’ can
`
`be something other than a ‘table.’” See Decision, Paper 9, p. 6. A “table” is
`
`merely a graphical illustration of associations between bits of data. The memory
`
`56 of the ‘468 patent, however, does not actually include a graphical illustration of
`
`status data such as that depicted in Figure 4 of the ‘468 patent, but electronically
`
`stores data with associations to other data as indicated graphically in Figure 4.
`
`As such, the channel log information in Cohen, which is also stored in
`
`memory, is stored in a “table” just like the status information stored in memory 56
`
`of the ‘468 patent. The Decision does not contest that the channel information is
`
`state data that is stored in memory. The Decision only urges that Cohen does not
`
`show that the “log of channel selection information is stored in a table.” See
`
`Decision, Paper 9, p. 13. In light of the above, however, the storage of the channel
`
`data in memory in Cohen is as much in a “table,” as the storage of the state
`
`information memory in the ’468 patent. Thus, Petitioner respectfully submits that
`
`{01704845.2}
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`- 5 -
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`
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`Case No.: IPR2014-1084
`
`U.S. Patent No. 7,126,468
`
`Cohen discloses storing data in a “state table” as required by both claims 29 and
`
`46.
`
`Claim 2 includes the same limitation as claims 29 and 46 and is believed to
`
`be anticipated by Cohen as well, for at least the same reasons discussed above.
`
`Accordingly, Petitioner respectfully submits that it is likely that it will
`
`succeed in invalidating claims 2, 29 and 46 of the ‘468 patent as anticipated by
`
`Cohen.
`
`III. CONCLUSION
`
`In view of the clarifications made above, there exists a reasonable likelihood
`
`that claims 1, 2, 11, 29 and 46 of the ‘468 patent are anticipated by Cohen.
`
`Accordingly, Petitioner respectfully requests that the Board reverse its Decision
`
`with respect to claims 1, 2, 11, 29 and 46 of the ‘468 and institute inter partes
`
`review of these claims, in addition to the inter partes review of claims 27, 28, 33,
`
`35, 45 and 49 which was ordered in the Decision. See Decision, Paper 9, p. 17.
`
`Date: January 23, 2015
`
`{01704845.2}
`
`- 6 -
`
`Respectfully submitted,
`
`/Douglas A. Miro/
`Reg. No. 31,643
`OSTROLENK FABER LLP
`1180 Avenue of the Americas
`7th Floor
`New York, NY 10036
`(212) 382-0700
`Counsel for Petitioner
`
`
`
`Case No.: IPR2014-1084
`
`U.S. Patent No. 7,126,468
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Eric J. Maiers, Reg. No. 59,614
`James J. Lukas, Reg. No. 59,114
`Matthew J. Levinstein, Pro Hac Vice
`Rob R. Harmer, Reg. No. 68,048
`GREENBURG TRAURIG, P.C.
`77 West Wacker Drive
`Suite 3100
`Chicago, IL 60101
`Maierse@gtlaw.com
`lukasj@gtlaw.com
`levinsteinm@gtlaw.com
`harmer@gtlaw.com
`chiipmail@gtlaw.com
`
`DATED: January 23, 2015
`
`{01704845.2}
`
`- 7 -
`
`/Jeannie Ngai/
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`New York, NY 10036
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