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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re Patent of: Arling et al.
`
`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
`
`
`Universal Remote Control, Inc.
`
` v.
`
`Universal Electronics, Inc.
`
`Case No. IPR2014-01084
`
`Trial Paralegal: Amy Kattula
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO
`on this 24th day of June, 2015
`
`
`
`
`
`
` By: /Jeannie Ngai/
`Jeannie Ngai
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`Case No: IPR2014-01084
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`U.S. Patent No. 7,126,468
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`
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`TABLE OF CONTENTS
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`Page
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`
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`I.
`Introduction......................................................................................................1
`The Examiner Did Not Consider Cohen During Prosecution .........................1
`II.
`III. Mr. Geier’s Declaration Properly Sets Forth Evidence of How One Skilled
`in the Art Would View the Claims At Issue and the Cited Art.......................3
`IV. Cohen Discloses All of the Limitations of Claims 27 and 35.........................4
`A. Cohen discloses “to update the data to represent the current state of the
`intended target appliance which will result from the intended target
`appliance performing the operation command.”...................................4
`B. Cohen discloses “updating operations,” as required by claims 27 and
`35
`........................................................................................................4
`C. Channel selection is a “state” as used in the ‘468 patent .......................6
`Cohen Discloses the Features of Claims 28 and 45 ........................................7
`V.
`VI. Cohen Discloses the Features of Claims 33 and 49 ........................................7
`VII. Conclusion .....................................................................................................10
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`Case No: IPR2014-01084
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`U.S. Patent No. 7,126,468
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`TABLE OF AUTHORITIES
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`Page
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`Regulations
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`37 C.F.R. §1.56(a)......................................................................................................2
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`Case No: IPR2014-01084
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`U.S. Patent No. 7,126,468
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`
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`EXHIBIT LIST (All exhibits previously filed)
`
`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,
`
`1001.
`
`1002.
`
`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.
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`"IntelliControl Reference Manual" Version. 8.1, April 2002 by Niles
`
`Audio Corporation.
`
`1005.
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`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.
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`Case No: IPR2014-01084
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`U.S. Patent No. 7,126,468
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`The following is the Petitioner’s Reply to the Patent Owner’s Response filed
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`March 25, 2015 (Paper 16), and is being timely filed in accordance with the
`
`Scheduling Order issued January 9, 2015 (Paper 10) and the Joint Stipulation of
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`the Parties filed May 21, 2015 (Paper 17).
`
`I.
`
`Introduction
`
`For the reasons set forth at least in the Petition filed June 30, 2015 (Paper 1),
`
`and consistent with the Board’s Decision to Institute dated January 9, 2015 (Paper
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`9), claims 27, 28, 33, 35, 45, and 49 of U.S. Patent No. 7,126,468 B2 (Ex. 1001,
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`“the ’468 patent”) are anticipated by U.S. Patent No. 5,235,414 to Cohen (Ex.
`
`1005, “Cohen” or “’414 patent”).
`
`II. The Examiner Did Not Consider Cohen During Prosecution
`
`The Patent Owner has alleged that the Examiner “considered” Cohen prior
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`to allowing the ‘468 patent. Paper 16, p. 3. Patent Owner refers to an excerpt from
`
`the Background of the ‘468 patent containing the Patent Owner’s characterization
`
`of Cohen’s disclosure. Id. The Patent Owner then argues that the Examiner must
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`have “considered” Cohen in its entirety because it was noted in the Background.
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`Id. This is incorrect.
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`It is submitted that while the Examiner may have read the Patent Owner’s
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`characterization of Cohen, the Patent Owner has presented no evidence that
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`Cohen’s entire disclosure was “considered” by the Examiner.
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`The Patent Owner further alleges that Cohen is “redundant and cumulative”.
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`Paper 16, p. 4. The Patent Owner has not identified another reference or any other
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`part of the record to establish that Cohen is cumulative.
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`Patent Owner does not dispute that Cohen was not cited in an Information
`
`Disclosure Statement. Patent Owner apparently asserts that citation of a prior art
`
`reference in the Background sufficiently complies with the rules of the Patent
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`Office and that insisting that a reference must be disclosed to the Office according
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`to the rules amounts to form-over-substance. Paper 16, p. 4. Patent Owner’s
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`arguments are directly contradictory to existing law and Patent Office procedures.
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`The duty to disclose information material to patentability is satisfied if the
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`information “is submitted to the Office in the manner prescribed by §§1.97(b)-(d)
`
`and 1.98” of 37 C.F.R. See 37 C.F.R. §1.56(a). The Patent Owner has not shown
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`that summarizing Cohen in the background satisfies the disclosure requirements of
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`the Patent Office.
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`Further, Patent Owner does not identify any evidence in the prosecution
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`history of the ‘468 patent to suggest that the Examiner did consider the entire
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`specification of Cohen, presumably because no such evidence exists. Cohen was
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`not listed in an Information Disclosure Statement and no mention is made of it or
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`its teachings by the Examiner.
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`Patent Owner’s conention that the Examienr considered Cohen is nothing
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`more than conjecture. Further, Patent Owner fails to provide any example of the
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`allegedly cumulative nature of the disclosure of Cohen.
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`Based on the available evidence, Cohen was not considered by the
`
`Examiner.
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`III. Mr. Geier’s Declaration Properly Sets Forth Evidence of How One
`Skilled in the Art Would View the Claims At Issue and the Cited Art
`
`The Patent Owner argues that Mr. Geier’s declaration should not be
`
`considered. Paper 16, p. 5. The Patent Owner reasons that Geier’s declaration
`
`should not be accepted because the declaration includes opinion statements. Id.
`
`This position has no merit. Mr. Geier’s declaration presents the opinion of an
`
`expert. Naturally, the statements in the Geier declaration are in the form of
`
`opinion statements. Mr. Geier’s declaration, however, relies on Cohen for factual
`
`support of those opionions. The Patent Owner has not explained why any of the
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`opinion statements are factually incorrect. Indeed, Patent Owner failed to provide
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`any sort of rebuttal to Mr. Geier’s opinions other than mere attorney argument.
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`IV. Cohen Discloses All of the Limitations of Claims 27 and 35
`
`A. Cohen discloses “to update the data to represent the current state
`of the intended target appliance which will result from the
`intended target appliance performing the operation command.”
`
`The Patent Owner alleges that Cohen does not disclose the above limitation
`
`of claim 27. Paper 16, p. 5. This is incorrect.
`
`As is set forth in the Petition, and as the Board recognized, at least col. 4, ll.
`
`4-6 of Cohen discloses this feature. Paper 1, p. 11 and Paper 9, p. 12. Patent
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`Owner offers no explanation as to why this portion of Cohen does not disclose this
`
`feature. Indeed, Patent Owned makes no mention whatsoever of this portion of
`
`Cohen.
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`Similarly, with respect to claim 35, Petitioner argued, and the Board agreed
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`that this same portion of Cohen discloses “to update data whereby the updated data
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`reflects a state of the intended target appliance which will result from the intended
`
`target appliance performing the operation” as recited in claim 35. Again, Patent
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`Owner offers no argument with respect to the disclosure of this portion of Cohen
`
`or why it does not disclose this feature of claim 35.
`
`B. Cohen discloses “updating operations,” as required by claims 27
`and 35
`
`The Patent Owner asserts that monitor 34 of Cohen does not perform the
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`“updating operations” required by claims 27 and 35. Paper 16, p. 5. Patent
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`Owner appears to argue that the “updating operations” must take place in the
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`monitor 34 of Cohen in order for Cohen to disclose this limitation. Contrary to this
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`position, however, Patent Owner admits that Cohen discloses transmitting updated
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`information to the host computer. Patent Owner is simply incorrect.
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`First, Petitioner notes that neither claim 27 nor claim 35 requires any
`
`particular device to perform the recited “updating” operations. Thus, whether
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`updating occurs in the monitor or elsewhere in Cohen is irrelevant to this claim.
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`Patent Owner admits that at least the host computer performs updating, and thus
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`Cohen discloses the updating operations of claims 27 and 35.
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`Further, Patent Owner’s characterization of Cohen cannot be correct in view
`
`of its admission that Cohen discloses transmitting updated information to the host
`
`computer. The updated data must be updated somewhere other than the host
`
`computer in order to be transmitted thereto. Thus, Patent Owner’s characterization
`
`of Cohen is incorrect in light of its own reading thereof.
`
`Patent Owner’s characterization of the operating instructions is also
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`inconsistent with the teachings of the ‘468 patent itself. The ‘468 patent expressly
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`states that the updated data may be at the appliance, at a command receiver, or at
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`“a remote device”. See Ex. 1005, col. 9, ll. 12-15. The ‘468 patent allows for
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`interpreting claim 28 and claim 35 to read on updating data remotely. Thus, claims
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`27 and 35 read on Cohen based on at least col. 4, ll. 4-5 (cited by the Petitioner)
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`and based on the Patent Owner’s characterization of Cohen.
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`C. Channel selection is a “state” as used in the ‘468 patent
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`The Patent Owner alleges that a channel selection is not a state. Paper 16, p.
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`7. The Patent Owner alleges that the ‘468 patent does not describe a channel
`
`selection as a state. Id. This is incorrect.
`
`The ‘468 patent discloses a state table in Fig. 4. The ‘468 patent discloses
`
`that the state table reflects “the state of an appliance by storing parameters that are
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`indicative of the transmission of commands to an appliance.” Ex. 1005, col. 5, ll.
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`1-3. A channel selection indicates the transmission of a command to an appliance.
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`Thus, a channel selection is a state as that term is used in the ‘468 patent.
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`Furthermore, as described in the ‘468 patent, a “state” is indicative of a
`
`condition. Id. Clearly, being tuned to a channel is a state of an appliance. As
`
`explained above, a channel selection fits the definition of a state provided in the
`
`‘468 patent, and Patent Owner fails to indicate any portion of the ‘468 patent in
`
`which channel selection is excluded. This under the broadest reasonable
`
`interpretation standard that is applied in Inter Partes Review, the term “state” is
`
`broad enough to encompass the channel an appliance is tuned to.
`
`In light of the above, the Petitioner’s contention that Cohen discloses
`
`“storing channel selection data in memory for future retrieval in Cohen’s system
`
`constitutes updating state data,” is consistent with the Board’s view as well as
`
`correct. Paper 1, pp. 11-12.
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`U.S. Patent No. 7,126,468
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`Patent Owner makes no mention of any other features of claims 27 and 35
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`and thus presumably does not contend that these features are not disclosed by
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`Cohen.
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`Accordingly, Cohen discloses all of the features of claims 27 and 35 such
`
`that these claims are invalid in light of Cohen.
`
`V. Cohen Discloses the Features of Claims 28 and 45
`
`The Patent Owner asserts that claims 28 and 45 should not be deemed
`
`anticipated by Cohen because claims 27 and 35 are not anticipated by Cohen.
`
`Paper 16, p. 8. As explained in the previous section, claims 27 and 35 are
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`anticipated by Cohen.
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`Patent Owner has offered no additional arguments in support of the
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`patentability of dependent claims 28 and 45, presumably because no such
`
`arguments exist.
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`Accordingly, for at least the reasons set forth in the Petition and consistent
`
`with the Board’s Decision, claims 28 and 45 are anticipated by Cohen.
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`VI. Cohen Discloses the Features of Claims 33 and 49
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`The Patent Owner asserts that claims 33 and 49 should not be deemed
`
`anticipated by Cohen because claims 27 and 35 are not anticipated by Cohen.
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`Paper 16, p. 8. As explained in the previous section, claims 27 and 35 are
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`anticipated by Cohen.
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`The Patent Owner also alleges that “monitor 34 of Cohen does not determine
`
`and store appliance states; the ‘outside world’ host computer does.” Paper 16, p. 8.
`
`Neither claim 33 nor claim 49, however, requires “determining” a state of an
`
`appliance. Thus, whether monitor 34 determines anything is not relevant to the
`
`validity of these claims.
`
`Patent Owner also alleges that Cohen claims to achieve its objective “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.’” Paper 16, p. 6.
`
`Apparently attempting to hide monitor 34 as the source of the transmission,
`
`the Patent Owner fails to mention that monitor 34 saves (capturing and logging)
`
`the information indicative of the state of the appliance. The Patent Owner refers to
`
`col. 6, lines 19-21, which states that if “it is determined that the data is to be
`
`transmitted at that time in step 82, the system continues with step 84 in which
`
`transmission occurs.” Step 82 is after step 80 in the process shown in Fig. 3. At
`
`step 80 data “pertinent to viewing preference is date and time stamped and the
`
`information is stored in RAM 60.” Ex. 1005, col. 6, ll. 9-11. RAM 60 is “a
`
`random access memory that stores both information regarding the tuning of the
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`entertainment system for later retrieval and the functions of the different remote
`
`control signals.” Id., col. 5, ll. 22-25. RAM 60 is part of monitor 34. See Id.,
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`Fig. 2. Clearly, the monitor 34 captures and logs the data, which is time and date
`
`stamped, for later retrieval. Thus, it cannot be concluded that monitor 34 does not
`
`store data related to “appliance states” as alleged by the Patent Owner.
`
`The Patent Owner alleges that monitor 34 “does not locally maintain data
`
`representative of or reflecting appliance states.” Paper 16, p. 9. However, as
`
`explained above, the “‘outside world’ host computer” receives “remote control
`
`signal data” from monitor 34. Clearly, monitor 34 is in “possession of” the
`
`appliance data. Otherwise, monitor 34 could not send that data to the ‘outside
`
`world’ host computer.”
`
`According to the Patent Owner, the “outside world” host computer receives
`
`information indicative of an appliance’s state. Paper 16, p. 8. If, as alleged by the
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`Patent Owner, the “outside world” is receiving information indicative of the state
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`of an appliance, then the “data” must be in monitor 34 before it is transmitted.
`
`That is, monitor 34 stores the data indicative of the state of an appliance.
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`
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`The Patent Owner argues that the data in claim 33 is “representative of a
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`current state of an intended target appliance,” and “the data” in claim 49 refers to
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`data that reflects “a state of the intended target appliance.” Paper 16, p. 8. The
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`Patent Owner admits that data is “periodically” sent to the “outside world” host
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`computer. Paper 16, p. 6, lines 4-6. The last data transmitted would be the most
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`current data stored in monitor 34 and transmitted. Thus, clearly Cohen discloses
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`data stored in monitor 34 that would correspond to the “data” in claims 33 and 49.
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`It is also clear that Cohen discloses that “the data is maintained locally
`
`within a device which receives the transmission,” as recited in claim 33, since
`
`monitor 34 would have to have the data locally before it is transmitted to the
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`“outside world” host computer. Similarly, Cohen clearly discloses that “the data is
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`maintained locally within the transmission monitoring device”, as recited in claim
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`49, since monitor 34 would have to have the data locally before it is transmitted to
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`the “outside world” host computer.
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`It should be further noted that since claims 33 and 49 are anticipated by
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`Cohen as described above, claims 27 and 35 are also anticipated.
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`VII. Conclusion
`
`As described above and in the Petition filed June 30, 2015, and consistent
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`with the Board’s Decision dated January 9, 2015, claims 27, 28, 33, 35, 45, and 49
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`of the ‘468 patent are anticipated by Cohen.
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`Date: June 24, 2015
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`Respectfully submitted,
`
`/Douglas A. Miro/
`Douglas A. Miro
`Reg. No. 31,643
`OSTROLENK FABER LLP
`1180 Avenue of the Americas, 7th Fl.
`New York, NY 10036
`(212) 382-0700
`Counsel for Petitioner
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`Case No.: IPR2014-1084
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`U.S. Patent No. 7,126,468
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on the below date, I caused the
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`foregoing to be served upon the following counsel of record via electronic mail
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`(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
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`
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`DATED: June 24, 2015
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`
`/Jeannie Ngai/
` Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`New York, NY 10036
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