IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Applicant:
`
`Case No.:
`
`Arling et al.
`
`IPR2014-01084
`
`Filing Date:
`
`09/19/2003
`
`Patent No.:
`
`7,126,468
`
`Title:
`
`System and Method for
`Monitoring Remote
`Control Transmissions
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Universal Remote Control, Inc.
`
`v.
`
`Universal Electronics, Inc.
`
`Trial Paralegal: Amy Kattula
`
`Attny Doc.: 059489.143800
`
`RESPONSE OF PATENT OWNER PURSUANT TO 37 C.F.R. § 42.120
`
`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 his correspondence is being electronically filed with the USPTO on this
`25th day of March, 2015.
`
`By: /Cynthia Tapia/
`Cynthia Tapia
`
`

`
`TABLE OF CONTENTS
`
`Pages
`
`I.
`
`II.
`
`INTRODUCTION...........................................................................................1
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S INVALIDITY
`ARGUMENTS ................................................................................................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Examiner Already Considered Cohen During Prosecution of the
`‘468 Patent.............................................................................................3
`
`Cohen Does Not Anticipate Claims 27 and 35 .....................................5
`
`Cohen Does Not Anticipate Claims 28 and 45 .....................................8
`
`Cohen Does Not Anticipate Claims 33 and 49 .....................................8
`
`III. CONCLUSION ...............................................................................................9
`
`i
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`

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`IPR2014-01084
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`TABLE OF AUTHORITIES
`
`Pages
`
`Cases
`Corning Glass Works v. Brenner, 470 F.2d 410 (D.C. Cir. 1972)............................4
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)...........................................4
`
`Statutes
`
`35 U.S.C. § 102..........................................................................................................4
`
`35 U.S.C. § 112..........................................................................................................4
`
`Other Authorities
`
`MPEP § 2129 .............................................................................................................4
`
`Regulations
`
`37 C.F.R. § 42.120..................................................................................................i, 1
`
`ii
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`

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`IPR2014-01084
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`EXHIBIT LIST
`
`2001.
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`2002.
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`2003.
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`2004.
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`2005.
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`2006.
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`2007.
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`2008.
`
`2009.
`
`2010.
`
`Mohawk Resources Ltd. v. Vehicle Service Group, LLC, Case
`IPR2014-00464, Paper 10 (P.T.A.B. Aug. 29, 2014)
`
`Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B. July
`23, 2014)
`
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014)
`
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00246, Paper 6
`(P.T.A.B. June 18, 2014)
`
`eBay, Inc. v. Paid, Inc., CBM2014-00125, Paper 15 (P.T.A.B. Sept.
`30, 2014)
`
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Paper No. 12 (P.T.A.B. Aug. 12, 2013)
`
`SAS Institute, Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper
`No. 15 (P.T.A.B. Dec. 30, 2013)
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Paper No. 12 (P.T.A.B. July 31, 2013)
`
`3D-Matrix, Ltd. v. Menicon Co., Case IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014)
`
`2011-2016. INTENTIONALLY SKIPPED
`
`2017.
`
`Trial Transcript from Universal Electronics, Inc. v. Universal Remote
`Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D. Cal.), Dkt. No. 398-1
`
`iii
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`

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`IPR2014-01084
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`2018.
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`2019.
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`2020.
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`2021.
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`2022.
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`2023.
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`2024.
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`2025.
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`2026.
`
`2027.
`
`Universal Remote Control, Inc.’s (“URC’s”) Initial Disclosures from
`Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
`8:12-cv-00329-AG-JPR (C.D. Cal.)
`
`URC’s Response to UEI’s Interrogatory at No. 6 from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`Ohsung Website Printout, available at
`http://www.ohsungec.com/02_affli/02_foreign/06.aspx.
`
`URC’s Amended Initial Disclosures from Universal Electronics, Inc.
`v. Universal Remote Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D.
`Cal.)
`
`Defendant Ohsung Electronics, USA, Inc.’s Answer to Second
`Amended Complaint, Dkt. No. 76, from Universal Electronics Inc., v.
`Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and
`Ohsung Electronics U.S.A., Inc., Case No. SACV 13-00984 AG
`(JPRx) (C.D. Cal.)
`
`LinkedIn Profile of Jak You, available at
`https://www.linkedin.com/pub/jak-you/92/8a5/6b.
`
`09/05/2013 M. Hurley Email to L. Kenneally
`
`Amended Notice of 30(b)(6) Deposition to URC from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`Joint Stipulation Staying Action Pending Petitions for Inter Partes
`Review of All Asserted Claims, Dkt. No. 87 from Universal
`Electronics Inc., v. Universal Remote Control, Inc., Ohsung
`Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No.
`SACV 13-00984 AG (JPRx) (C.D. Cal.)
`
`Joint Statement of the Parties Pursuant to Order Staying Action (ECF
`No. 88) and Joint Request to Continue Status Conference, Dkt. No.
`102 from Universal Electronics Inc., v. Universal Remote Control,
`
`iv
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`

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`IPR2014-01084
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`Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A.,
`Inc., Case No. SACV 13-00984 AG (JPRx) (C.D. Cal.)
`
`2028. URC NY Secretary of State, Division of Corporations, Entity
`Information Website Printout
`
`v
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`

`
`Universal Electronics, Inc. (“UEI” or “Patent Owner”), respectfully submits this
`
`Response in accordance with 37 C.F.R. § 42.120 to the Petition for Inter Partes
`
`Review of Claims 27, 28, 33, 35, 45 and 49 of U.S. Patent No. 7,126,468 (the
`
`“‘468 patent”) filed by Universal Remote Control, Inc. (“URC” or “Petitioner”).
`
`UEI has timely filed its Response in accordance with the Board’s Scheduling
`
`Order. (Paper 10.)
`
`I.
`
`INTRODUCTION
`
`The Board granted-in-part and denyied-in-part URC’s Petition, instituting
`
`inter partes review proceedings solely on Claims 27, 28, 33, 35, 45 and 49 of the
`
`‘468 patent based on alleged anticipation by U.S. Patent No. 5,235,414 (“Cohen”).
`
`The Board should affirm the validity of Claims 27, 28, 33, 35, 45 and 49 of the
`
`‘468 patent because each of Petitioner’s remaining grounds of invalidity suffers
`
`from several fatal defects.
`
`First, Cohen is cumulative of art already considered by Examiner during
`
`prosecution. The Patentee disclosed and expressly discussed Cohen in the
`
`Background section of the ‘468 patent specification. Nevertheless, the Petitioner
`
`claims that the Examiner never considered these references. The Board should
`
`reject such unsubstantiated attorney argument. Petitioner glosses over the
`
`presumption of administrative correctness and instead accuses Patent Owner of
`
`“misdirecting the reader to other features” of these references in the ‘468 patent
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`

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`IPR2014-01084
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`specification. The Patent Office has already concluded that the ‘468 patent is
`
`patentable over Cohen, and the Board should not disturb that conclusion. Needless
`
`to say, Cohen is redundant of and cumulative to the prior art that the Examiner
`
`already considered because it is the exact same prior art reference that the
`
`Examiner already considered.
`
`Further, Cohen fails to disclose all of the limitations of each of the
`
`challenged claims. For example, Cohen teaches that a host computer system that is
`
`entirely separate from the monitoring device that receives remote control
`
`transmissions determines appliance state, and therefore does not teach that the
`
`monitoring device updates data representing the current state of a target appliance.
`
`Cohen therefore also does not teach that the data representing the current state is
`
`maintained locally within the device that receives a transmission from a remote
`
`control. For these reasons, Petitioner has not met its burden to demonstrate a
`
`reasonable likelihood that any of Claims 27, 28, 33, 35, 45 and 49 are invalid, and
`
`as such, the Board should affirm the validity of those claims.
`
`II.
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S INVALIDITY
`ARGUMENTS
`
`Petitioner’s remaining ground for invalidity suffers from several fatal defects
`
`such that the Board should affirm the validity of Claims 27, 28, 33, 35, 45 and 49
`
`of the ‘468 patent.
`
`2
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`

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`IPR2014-01084
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`A.
`
`The Examiner Already Considered Cohen During Prosecution of
`the ‘468 Patent
`
`The Patent Office has already considered Cohen. The ‘468 patent discusses
`
`Cohen in its background section:
`
`Devices adapted to unobtrusively monitor the tuning of a home
`entertainment center are known in the art. For example, U.S. Pat. No.
`5,235,414 describes a device adapted to work with the remote controls
`of the various appliances that comprise the home entertainment center.
`The device functions to receive a signal from the remote controls,
`determine which appliance was the intended target of the signal, send
`an infrared signal to the intended target appliance, and store tuning
`information. In this manner, the stored information may be retrieved
`at a later time and used to determine program ratings.
`
`While the system described in U.S. Pat. No. 5,235,414 performs
`adequately when it is only desired to simply monitor the transmission
`of command codes to a home entertainment center, what is needed is a
`system that functions to monitor remote control transmissions for the
`purpose of tracking the state of appliances.
`
`(‘468 patent at col. 1, ll. 29-49.) Thus, the Patentee disclosed Cohen to the
`
`USPTO, and the Examiner is presumed to have considered Cohen by virtue of its
`
`inclusion in the ‘468 patent’s specification.1
`
`
`1 An examiner is obligated to review the specification of each application examined, at a
`minimum, to verify that the specification is complete and provides sufficient written
`description for the claims under 35 U.S.C. § 112(a), as well as to construe the applicant’s
`claims. See MPEP § 608 (“To obtain a valid patent, a patent application as filed must
`contain a full and clear disclosure of the invention in the manner prescribed by 35 U.S.C.
`
`3
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`

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`IPR2014-01084
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`In an attempt to skirt the fact that the ‘468 patent expressly disclosed Cohen
`
`to the USPTO, Petitioner makes the absurd claim that Patent Owner “misdirect[ed]
`
`the reader to other features of the [Cohen] invention” and did not list Cohen in an
`
`Information Disclosure Statement. (Pet. at 11-12.) The Board should reject
`
`Petitioner’s form-over-substance attorney argument that Patent Owner hid Cohen
`
`in plain sight in the specification of the ‘468 patent. Cohen is redundant of and
`
`cumulative to the prior art already considered by the Patent Office. The Board
`
`therefore should not disturb the Patent Office’s prior determination that the claims
`
`of the ‘468 patent are patentable over Cohen.
`
`
`112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”); Phillips v. AWH Corp., 415 F.3d
`1303, 1316 (Fed. Cir. 2005) (“The Patent and Trademark Office (‘PTO’) determines the
`scope of claims in patent applications not solely on the basis of the claim language, but
`upon giving claims their broadest reasonable construction in light of the specification as
`it would be interpreted by one of ordinary skill in the art. Indeed, the rules of the PTO
`require that application claims must conform to the invention as set forth in the remainder
`of the specification and the terms and phrases used in the claims must find clear support
`or antecedent basis in the description so that the meaning of the terms in the claims may
`be ascertainable by reference to the description.”) (internal quotations and citations
`omitted). A patent examiner is free to cite and rely upon admitted prior art identified in a
`patent specification. MPEP § 2129 provides that “[a] statement by an applicant in the
`specification or made during prosecution identifying the work of another as ‘prior art’ is
`an admission which can be relied upon for both anticipation and obviousness
`determinations, regardless of whether the admitted prior art would otherwise qualify as
`prior art under the statutory categories of 35 U.S.C. 102.” The words “prior art” need not
`appear in the specification for there to be admitted prior art. See, e.g., Corning Glass
`Works v. Brenner, 470 F.2d 410, 419 (D.C. Cir. 1972); see also In re LoPresti, 333 F.2d
`932, 934 (C.C.P.A. 1964).
`
`4
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`IPR2014-01084
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`B.
`
`Cohen Does Not Anticipate Claims 27 and 35
`
`At the outset, Petitioner’s reliance on the Geier Declaration is perfunctory
`
`and unhelpful. Mr. Geier simply cites to the same passages of Cohen referred to in
`
`the Petition and prefaces each such passage with the statement that “in my
`
`opinion,” Cohen discloses the limitation at issue. Put simply, the Geier
`
`Declaration does not provide any additional support or analysis that would assist
`
`the Board in determining whether Cohen anticipates the challenged claims of the
`
`‘468 patent.
`
`Cohen does not anticipate independent Claims 27 and 35 because it does not
`
`disclose the “update the data [representative of a current state] to represent the
`
`current state of the intended target appliance which will result from the intended
`
`target appliance performing the operation commanded” limitation of Claim 27 and
`
`the “update data whereby the updated data reflects a state of the intended target
`
`appliance which will result from the intended target appliance performing the
`
`operation [commanded]” limitation of Claim 35. Petitioner asserts that monitor 34
`
`of Cohen performs the steps of Claims 27 and 35. (Pet. at 25-28, 30-32.)
`
`However, monitor 34 of Cohen does not perform the above-referenced updating
`
`operations and therefore does not perform all of the functionality required by the
`
`“comparing” steps of Claims 27 and 35.
`
`5
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`IPR2014-01084
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`By way of background, the purpose of Cohen is to provide an unobtrusive
`
`way of monitoring the viewing habits of users of audio/video entertainment
`
`systems having multiple components—for example, for generating TV show
`
`ratings. (Cohen at 1:6-28, 2:44-48, 3:17-24.) Cohen claims to achieve this by
`
`capturing and logging remote control transmissions and periodically transmitting
`
`that information to a completely separate host computer, which Cohen describes as
`
`being part of the “outside world.” (Id. at 6:21-24, 6:39-42, 6:57-61.) Importantly,
`
`Cohen emphasizes that it is that the “outside world” host computer, and not
`
`monitor 34, that analyzes and interprets the remote control signal data received
`
`from monitor 34 to determine what the viewer is watching:
`
`If the data is to be transmitted in step 84, such is transmitted to a
`central host computer (not shown) that analyzes the data and
`determines what viewers are watching/listening to.
`(Id. at 6:39-42 (emphasis added).)
`The information transmitted by the present invention to a host
`computer allows the host computer to determine what device was
`supplying the signal and to create relevant programming data.
`(Id. at 6:57-61.)
`
`Thus, to the extent that any device in Cohen is updating data representing an
`
`appliance’s state, it is the entirely separate, “outside world” host computer, and not
`
`monitor 34 of Cohen. Cohen therefore does not teach the “update the data
`
`[representative of a current state] to represent the current state of the intended
`
`6
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`IPR2014-01084
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`target appliance which will result from the intended target appliance performing
`
`the operation commanded” limitation of Claim 27 and the “update data whereby
`
`the updated data reflects a state of the intended target appliance which will result
`
`from the intended target appliance performing the operation [commanded]”
`
`limitation of Claim 35 and, accordingly, does not anticipate Claims 27 and 35.
`
`Moreover, even if the Board determines that Cohen does teach updating data
`
`representing a current state of a target appliance, Petitioner has not met its burden
`
`of showing that channel selection is a state of a target appliance. Neither the ‘468
`
`patent nor Cohen describe channel selection as a state. That, in and of itself,
`
`dictates that Cohen does not anticipate Claims 27 and 35. Nevertheless, in an
`
`attempt to bridge the gap, the Petition makes the conclusory statement, “Channel
`
`selection is a state, as claimed in the ‘468 patent,” and then cites to paragraphs 41
`
`and 53 of the Geier Declaration. (Pet. at 28, 32.) In paragraphs 41 and 53 of Mr.
`
`Geier’s declaration, he provides the equally conclusory statement that “[i]t is [his]
`
`opinion that channel selection is a state, as claimed in the ‘468 patent.” (Geier
`
`Decl. at ¶¶ 41, 53.) Mr. Geier cites to no other extrinsic evidence in support of, or
`
`otherwise explains his underlying basis for, that conclusory statement. Thus,
`
`Petitioner has not established that channel selection is a state of a target appliance
`
`and therefore has not met its burden of establishing by a preponderance of the
`
`evidence that Cohen anticipates Claims 27 and 35.
`
`7
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`IPR2014-01084
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`Accordingly, the Board should affirm the validity of Claims 27 and 35, as
`
`well as Claims 28 and 33, which depend from Claim 27, and Claims 45 and 49,
`
`which depend from Claim 35.
`
`C.
`
`Cohen Does Not Anticipate Claims 28 and 45
`
`As noted above, Cohen does not disclose all of the limitations of Claim 27
`
`and 35, and therefore cannot, as a matter of law, disclose all of the limitations of
`
`dependent Claims 28 and 45, respectively.
`
`D.
`
`Cohen Does Not Anticipate Claims 33 and 49
`
`As noted above, Cohen does not disclose all of the limitations of Claim 27
`
`and 35, and therefore cannot, as a matter of law, disclose all of the limitations of
`
`dependent Claims 33 and 49, respectively.
`
`In addition, Cohen also does not teach “wherein the data is maintained
`
`locally within a device which receives the transmission,” as recited in Claim 33,
`
`and “wherein the data is maintained locally within the transmission monitoring
`
`device,” as recited in Claim 49. The claim term “the data” in Claim 33 finds
`
`antecedent basis from “a data representative of a current state of an intended target
`
`appliance” recited in Claim 27. Similarly, “the data” in Claim 49 refers to “data …
`
`[that] reflects a state of the intended target appliance” recited in Claim 35. As
`
`discussed in Section III.B above, monitor 34 of Cohen does not determine and
`
`store appliance states; the “outside world” host computer does. Because monitor
`
`8
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`IPR2014-01084
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`34 of Cohen does not log appliance states, it therefore follows that monitor 34
`
`likewise does not locally maintain data representative of or reflecting appliance
`
`states. Therefore, Cohen does not anticipate Claims 33 and 49, and the Board
`
`should affirm the validity of those claims.
`
`III. CONCLUSION
`
`For at least the foregoing reasons, Cohen does not anticipate any of Claims
`
`27, 28, 33, 35, 45 and/or 49 of the ‘468 patent, and the Board should therefore
`
`affirm the validity of each of those claims.
`
`Date: March 25, 2015
`
`Respectfully Submitted,
`GREENBERG TRAURIG, LLP
`
`/Eric J. Maiers/
`By: 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
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`(312) 456-8400
`
`9
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`IPR2014-01084
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`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):
`
`Douglas A. Miro
`Keith Barkaus
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Avenue of the Americas New
`York, NY 10036
`Telephone: (212) 596-0500
`Facsimile: (212) 382-0888
`dmiro@ostrolenk.com
`kbarkaus@ostrolenk.com
`jngai@ostrolenk.com
`
`Peter H. Kang, Reg. No. 40,350
`Theodore W. Chandler, Reg. No. 50,319
`Ferenc Pazmandi, Reg. No. 66,216
`Sidley Austin LLP
`1001 Page Mill Rd.
`Building One
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (65) 565-7100
`pkang@sidley.com
`tchandler@sidley.com
`fpazmandi@sidley.com
`urc@sidley.com
`
`Date:
`
`March 25, 2015
`
`/s/ Cynthia Tapia
`Cynthia Tapia
`
`10