`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`In re Application of: Arling et al.
`
`Patent No.: 7,126,468
`
`Filed: September 19, 2003
`
`Issued: October 24, 2006
`
`
`
`
`
`Declaration of
`James T. Geier
`
`In Support of the Petition for Inter
`Partes Review of U.S. Patent No.
`7,126,468
`
`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
`
`
`DECLARATION OF JAMES T. GEIER
`
`
`
`Background and Qualifications
`
`1. My name is James T. Geier. I am the founder and principal consultant for
`
`Wireless-Nets. I have 30 years experience in the communications industry
`
`designing, analyzing and implementing communications systems, wireless
`
`networks, and mobile devices.
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`
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`Universal Remote Control Exhibit 1008: Page 1
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`2.
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`I earned my Masters of Science in Electrical Engineering from the Air
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`Force Institute of Technology in 1990. I received my Bachelor of Science in
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`Electrical Engineering from California State University in 1985.
`
`3.
`
` I served in the U.S. Air Force from 1977 to 1992 as a Commissioned
`
`Officer where I worked as a Communications System Engineer for six years, as a
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`Systems Test Engineer for four years and a Systems Design Engineer for three
`
`years. After the Air Force, I worked in private industry for eight years before
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`founding my current company, Wireless-Nets, Ltd. in April, 2000.
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`4.
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`In my role as a Communications Systems Engineer for the U.S. Air Force
`
`from 1977 to 1983, I performed acceptance testing of newly-designed radar
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`systems and maintained automatic tracking radar systems in support of tactical Air
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`Force operations worldwide at the 75th TCF. From 1986 to 1989, I performed
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`analog, digital, and protocol tests on various government wireless computer
`
`networks and developed testing approaches and methods as a Systems Test
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`Engineer for the AFCC Operational Test and Evaluation Center as a Lieutenant.
`
`From 1990 to 1992 I served as a Captain at the Information Systems Center, where
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`I evaluated the effectiveness of wireless LAN technology for use in mobile and
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`portable military environments, represented the Air Force as part of the IEEE
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`802.11 Wireless LAN standards development and designed and implemented
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`large-scale LANs and WANs for various government organizations.
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`Universal Remote Control Exhibit 1008: Page 2
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`5. After the Air Force, I was employed by Adroit Systems, where I
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`researched and analyzed wireless communications technologies for use in U.S.
`
`Department of Defense airborne platforms. In addition, I was employed by TASC,
`
`Inc., where analyzed and developed communications systems for various
`
`applications, such as data communications on submarines and within electrical
`
`power plants, and designed and implemented databases for various applications,
`
`such as narcotics tracking systems. In addition, I was employed by Monarch
`
`Marking Systems, where I designed and developed wireless middleware that
`
`coordinated communications among various systems components, such as bar code
`
`scanners, printers and application servers.
`
`6. As a consultant for Wireless-Nets, Ltd., I have designed and
`
`implemented wireless systems for various applications. For example, I designed
`
`and implemented a wireless system that includes a transmitting device with a
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`keypad, joystick or other input device that would generate a code indicating
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`actuation of the input device and transmit the code to a receiver. The receiver
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`would decode the code and generate and transmit commands to control various
`
`other devices.
`
`7.
`
`I have authored over a dozen books on mobile and wireless topics,
`
`including Designing and Deploying 802.11n Wireless Networks (Cisco Press),
`
`Implementing 802.1X Security Solutions (Wiley), Wireless Networking Handbook
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`
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`Universal Remote Control Exhibit 1008: Page 3
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`(New Riders) and Network Re-engineering (McGraw- Hill).
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`8.
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`I have been an active participant within IEEE standards organizations,
`
`such as the IEEE 802.11 Working Group, and the Wi-Fi Alliance and have served
`
`as Chairman of the IEEE Computer Society, Dayton Section, and various
`
`conferences.
`
`9. A copy of my latest curriculum vitae (C.V.) is attached as Appendix A.
`
`Status as Independent Expert Witness
`
`10.
`
`I have been retained in this matter by Universal Remote Control, Inc.
`
`("Petitioner" or "URC") to provide an analysis of the scope and content of U.S.
`
`Patent No. 7,126,468 (hereinafter the "'468 patent") relative to the state of the art at
`
`the time of the earliest application underlying the '468 Patent. In particular, my
`
`analysis relates only to claims 1, 2, 11, 27-29, 33, 35, 45, 46 and 49. I have also
`
`been retained to provide analysis regarding what a person of ordinary skill in the
`
`art related to universal remote control devices would have understood at the time
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`of the earliest application underlying the '468 patent.
`
`11.
`
`I am being compensated at the rate of $300 per hour for my work. My fee
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`is not contingent on the outcome of any matter or on any of the technical positions
`
`I explain in this declaration. I have no financial interest in Petitioner.
`
`12.
`
`I have been informed that Universal Electronics Inc. (hereinafter referred
`
`
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`Universal Remote Control Exhibit 1008: Page 4
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`
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`to as "Patent Owner") owns the '468 Patent against Petitioner URC. I have no
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`financial interest in the Patent Owner or the '468 patent nor to my recollection have
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`I ever had any contact with the Patent Owner, or the inventors of the 468 patent,
`
`Paul Arling, Wayne Scott, Christopher Chambers or Joseph Lee Haughawout.
`
`Description of the Relevant Field and the Relevant Timeframe
`
`13.
`
`I have carefully reviewed the '468 Patent.
`
`14. For convenience, all of the information that I considered in arriving at my
`
`opinions is listed in Appendix B.
`
`15. Based on my review of these materials, I believe that the relevant field
`
`for purposes of the '468 Patent is the remote control and coordination of consumer
`
`electronics and home automation systems. I have been informed that the relevant
`
`timeframe runs from around 1986 through 2003.
`
`16. As described in above, I have extensive experience in the relevant field,
`
`including experience relating to wireless communications and coordination of
`
`system components. Based on my experience, I have an established understanding
`
`of the relevant field in the relevant timeframe.
`
`The Person of Ordinary Skill in the Relevant Field in the Relevant Timeframe
`
`17.
`
`I have been informed that "a person of ordinary skill in the relevant field"
`
`is a hypothetical person to whom an expert in the relevant field could assign a
`
`
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`Universal Remote Control Exhibit 1008: Page 5
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`routine task with reasonable confidence that the task would be successfully carried
`
`out. I have been informed that the level of skill in the art is evidenced by the prior
`
`art references. The prior art discussed herein demonstrates that a person of ordinary
`
`skill in the art, at the time the '468 patent was filed, would have a bachelors degree
`
`in electrical engineering, telecommunications, or computer science (or an
`
`equivalent degree) with two years experience in the communications industry and
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`was aware of programmable universal remote controls, including techniques for
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`receiving and decoding remote control transmissions and was aware of basic
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`database theory for storing data.
`
`18. Based on my experience, I have an understanding of the capabilities of a
`
`person of ordinary skill in the relevant field. I have supervised, directed, and
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`instructed many such persons over the course of my career.
`
`Background of the Technology
`
`19.
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`In general, remote controls were developed to control electronic home
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`appliances, such as televisions, stereos, lights, thermostats and related devices.
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`These devices are designed to receive commands transmitted from the remote
`
`controls in order to perform a function desired by the user of the remote control.
`
`This communication is not one way, as remote controls were developed that could
`
`receive commands back from the devices they control. Remote controls also
`
`developed the ability to receive commands from other remote controls in order to
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`
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`Universal Remote Control Exhibit 1008: Page 6
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`learn the commands.
`
`20. A programmable universal remote control serves to allow a user to
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`aggregate the command functions performed by multiple remote controls into a
`
`single device. A programmable universal remote control, once configured for, or
`
`matched to, a user's equipment, serves to control multiple remote controllable
`
`electronic appliances via a single control device.
`
`21. As illustrated by the references discussed below, a person of ordinary
`
`skill in the art, in the relevant timeframe, was aware of encoding and transmitting
`
`command codes to targeted devices, receiving command codes and decoding the
`
`command codes while tracking the status of the targeted devices based on the
`
`decoded command codes.
`
`The '468 Patent
`
`22. The '468 patent describes that devices adapted to unobtrusively monitor
`
`the tuning of a home entertainment center are known in the art and cites to U.S.
`
`Patent No. 5,235,414, which, according to the '468 patent, receives a signal from a
`
`remote control, determines which appliance was the intended target of the signal,
`
`and stores tuning information. The '468 patent also describes that technology was
`
`known in the art regarding tracking the states of various components of a home
`
`entertainment center, citing U.S. Patent Application 2001/0045819. A review of
`
`just these two reference reveals that all of the functionality claimed in the claims at
`
`
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`Universal Remote Control Exhibit 1008: Page 7
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`
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`issue from the '468 patent was well known in the art at the time the '468 patent was
`
`filed.
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`23. The '468 patent describes a system and method for monitoring remote
`
`control transmissions for the purpose of updating state tables that track remotely
`
`controlled appliances. See '468 patent, Abstract. The patent also mentions
`
`querying the information stored in the state tables to determine the present state of
`
`these appliances to avoid placing the appliances in an unintended state. Ibid.
`
`However, the '468 patent claims subject matter broader than this description,
`
`stopping at updating the information stored in the state table and leaving out the
`
`querying step. See ‘468 patent, claims 1, 2, 11, 27-29, 33, 35, 45, 46 and 49.
`
`24. The '468 patent issued from U.S. Patent Application No. 10/665,650 (the
`
`"'650 application"), filed on September 19, 2003. I have been informed that the
`
`'650 application claims priority as a continuation-in-part to U.S. Patent App. No.
`
`10/603,839, filed June 25, 2003, which matured into U.S. Patent No. 7,005,979
`
`(the "'979 patent"). However, by comparing the claims and specification of the
`
`'468 patent to the specification of the '979 Patent, it is my opinion that the claims
`
`of the '468 patent are based on matter that is not disclosed in the '979 patent. Such
`
`new matter includes the disclosure of keeping track of the states of one or more
`
`appliances. For example, column 4, line 64 to column 6, line 6 of the '468 patent,
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`which discloses the use of a state table to keep track of the states of one or more
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`
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`Universal Remote Control Exhibit 1008: Page 8
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`
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`appliances, does not appear in the '979 patent. See '979 patent. The same is true
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`for column 6, lines 24 to 28 and column 9, line 12 to column 10, line 38 of the '468
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`patent, and other sections. Id. It has been explained to me that if the claims of a
`
`patent are not supported by a priority document, then the claims will not gain the
`
`benefit of the earlier filing date of that priority document. Since the claims of the
`
`'468 patent are not supported by the '979 patent, it is my understanding that the
`
`'468 patent is not entitled to the priority date of the '979 patent.
`
`Claim Interpretation
`
`25.
`
`In proceedings before the USPTO, I understand that the claims of an
`
`unexpired patent are to be given their broadest reasonable interpretation in view of
`
`the specification from the perspective of one skilled in the art, according to 37
`
`C.F.R. § 42.100(b). I have carefully considered the '468 patent and the prosecution
`
`history of the '468 patent based upon my experience and knowledge in the relevant
`
`field. According to my understanding, the '468 patent uses state tables in the most
`
`basic sense – something that simply associates one or more functions of an
`
`appliance or device each with a corresponding state. For example, the function
`
`"power" can have the state "on" (1) or "off" (0). See '468 patent, Fig. 4; col. 4, ll.
`
`65-66.
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`
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`Universal Remote Control Exhibit 1008: Page 9
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`26. This is the broadest reasonable interpretation in view of the specification
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`and from my perspective as one skilled in the art.
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`27. This and the remaining claim terms of the '468 patent are used in their
`
`ordinary and customary sense as one skilled in the relevant field would understand
`
`them.
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`Unpatentability Based on Prior Art in the Present Proceedings
`
`28.
`
`I am informed that the '468 Patent issued from U.S. Patent Application
`
`No. 10/665,650, filed on September 19, 2003. I have also been informed that the
`
`'650 application claims priority as a continuation-in-part to U.S. Patent App. No.
`
`10/603,839, filed June 25, 2003. As I explained above, it is my understanding that
`
`the ‘468 patent is not entitled to the earlier priority date. Regardless, it is my
`
`understanding that all of the art discussed below qualifies as prior art under either
`
`date.
`
`29.
`
`I have been informed that a patent claim can be found unpatentable as
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`
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`Universal Remote Control Exhibit 1008: Page 10
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`
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`anticipated when each and every claim limitation is found within a single reference
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`or is a necessary part of a claim limitation. I understand that an anticipation
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`analysis involves a consideration of (1) the scope and content of the prior art; (2)
`
`the differences between the claimed inventions and the prior art; and (3) the level
`
`of ordinary skill in the pertinent art.
`
`30.
`
`I have been informed that a patent claim can be found unpatentable as
`
`obvious where the differences between the subject matter sought to be patented
`
`and the prior art are such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having ordinary skill in the
`
`relevant field. I understand that an obviousness analysis involves a consideration of
`
`(1) the scope and content of the prior art; (2) the differences between the claimed
`
`inventions and the prior art; (3) the level of ordinary skill in the pertinent art; and
`
`(4) secondary considerations of non-obviousness.
`
`31. My analysis of these considerations is set forth in the following sections.
`
`The ‘414 patent teaches all elements recited by claims 1, 2, 11, 27, 28, 29, 33,
`35, 45, 46 and 49 of the '468 patent.
`
`32. U.S. Patent No. 7,126,414 to Cohen (the ‘414 patent") was filed May 21,
`
`1990, and issued on Aug. 10, 1993, almost 10 years before the earliest priority date
`
`claimed by the '468 patent. The '414 patent teaches "[a] meter for unobtrusively
`
`monitoring the tuning of a home entertainment center." The '414 patent, Abstract.
`
`
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`Universal Remote Control Exhibit 1008: Page 11
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`
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`The '414 patent teaches that its system "receives signals from the remote control(s),
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`decides to which component the signal was intended, … and stores tuning
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`information regarding the center." Id. Thus, even a general review of the '468
`
`patent reveals, particularly to on skilled in the art, that the '414 patent discloses the
`
`purported invention of the ‘468 patent.
`
`33. Although the '414 patent was discussed in the Background section of the
`
`'468 patent disclosure (misdirecting the reader to other features of the '414
`
`invention), I do not see the prior art '414 patent listed on the '468 patent as being
`
`considered by the Examiner, nor do I see the '414 patent disclosed by the
`
`applicants as material in an Information Disclosure Statement. Additionally, it was
`
`not mentioned in the prosecution history of the '468 patent. The '414 patent
`
`discloses the exact feature that the applicants argued that the other prior art did not
`
`disclose and which they claimed made their purported invention novel -
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`determining the state of an appliance from remote control transmissions.
`
`34.
`
`In my opinion, the '414 patent teaches each and every limitation of claims
`
`1, 2, 11, 27, 28, 29, 33, 35, 45, 46 and 49 of the '468 patent.
`
`Claim 1
`
`35.
`
`In my opinion, the '414 patent discloses a device intended to monitor
`
`remote control transmissions. See '414 patent, Title ("Non-Obtrusive
`
`Programming Monitor"), Abstract.
`
`
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`Universal Remote Control Exhibit 1008: Page 12
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`36.
`
`In my opinion, the '414 patent discloses identifying to a recipient device a
`
`plurality of intended target appliances. See '414 patent at col. 3, ll. 63-64 (Monitor
`
`34 is the recipient device. Television 10, VCR 11 and converter 12 are a plurality
`
`of intended target appliances.).
`
`37.
`
`In my opinion, the '414 patent discloses receiving at the recipient device
`
`a transmission from the remote control. See '414 patent at col. 4, ll. 50-51; Fig. 2
`
`(receiver 38, which is connected to monitor 34, receives a transmission from the
`
`remote control 16 - in the upper left hand corner of Fig. 2, remote controls 16 are
`
`shown communicating via infrared signals to receivers 38, and wherein the output
`
`of receivers 38 are connected to I/R Decoder block 52).
`
`38.
`
`In my opinion, the '414 patent discloses determining at the recipient
`
`device if the transmission from the remote control is intended to command an
`
`operation of one of the plurality of intended target appliances. See '414 patent at
`
`col. 4, ll. 51-55; Fig. 2 (IR decoder 52 is part of monitor 34 - I/R Decoder block 52
`
`receives the transmissions from the remote controls, decodes them, and
`
`communicates via Bus 51 with Microprocessor 53, and thus the ‘414 system
`
`determines if that transmission is intended to command an operation of an intended
`
`target appliance).
`
`39.
`
`In my opinion, the '414 patent discloses comparing the transmission from
`
`the remote control against a plurality of commands maintained within the recipient
`
`
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`Universal Remote Control Exhibit 1008: Page 13
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`
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`device when the transmission from the remote control is determined to be intended
`
`to command an operation of one of the plurality of intended target appliances. See
`
`'414 patent at col. 5, ll. 8-19 (monitor 34 stores functions that correspond to the
`
`transmission of signals from the remote control); col. 5, ll. 61-64 (monitor 34,
`
`using the input signals from the remote control and the microprocessor 53,
`
`compares the transmissions from the remote control against commands maintained
`
`within monitor 34 to check the validity of the transmissions).
`
`40.
`
`In my opinion, the '414 patent discloses updating data maintained within
`
`the recipient device such that the updated data reflects a state of the one of the
`
`plurality of intended target appliances which will result from the one of the
`
`plurality of intended target appliances performing the operation. See col. 4, ll. 4-5
`
`(when monitor 34 receives a signal from a remote control, monitor 34 (using
`
`microprocessor 53) updates the state data stored in its memory); col. 5, 11. 22-25.
`
`It is my opinion that channel selection is a state, as claimed in the '468 patent.
`
`Claim 2
`
`41.
`
`In my opinion, the '414 patent discloses the method as recited in claim 1,
`
`as explained above, and further discloses that the data is maintained within a state
`
`table. See '414 patent at col. 4, ll. 4-5 and ll. 64-66; Fig. 4; col. 5, ll. 22-25 (the
`
`'414 patent teaches a state table that stores parameters representative of one or
`
`more states of one or more appliances). It is my opinion that channel selection is a
`
`
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`Universal Remote Control Exhibit 1008: Page 14
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`
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`state, as claimed in the '468 patent.
`
`Claim 11
`
`42.
`
`In my opinion, the '414 patent discloses the method as recited in claim 1,
`
`as explained above, and further discloses that at least one of the commands in the
`
`plurality of commands is learned from the remote control. See col. 5, ll. 9-12.
`
`Claim 27
`
`43.
`
`In my opinion, the '414 patent discloses a method of updating a data
`
`representative of a current state of an intended target appliance. See '414 patent at
`
`col. 4, ll. 4-5 (when monitor 34 receives a signal from the remote control, monitor
`
`34 updates the state data stored in its memory).
`
`44.
`
`In my opinion, the '414 patent discloses receiving a transmission from a
`
`remote control. See '414 patent at col. 4, ll. 50-51; Fig. 2 (receiver 38, which is
`
`connected to monitor 34, receives a transmission from the remote control 16).
`
`45.
`
`In my opinion, the '414 patent discloses comparing the transmission from
`
`the remote control to a plurality of commands to determine if the transmission
`
`from the remote control is one for commanding an operation of the intended target
`
`appliance. See '414 patent at col. 5, ll. 8-19 (monitor 34 stores functions that
`
`correspond to the transmission of signals from the remote control); col. 5, ll. 61-64
`
`(monitor 34 compares the transmissions from the remote control against
`
`commands maintained within monitor 34 to check the validity of the
`
`
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`Universal Remote Control Exhibit 1008: Page 15
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`
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`transmissions).
`
`46.
`
`In my opinion, the '414 patent discloses updating the data to represent the
`
`current state of the intended target appliance which will result from the intended
`
`target appliance performing the operation commanded. See '414 patent at col. 4, ll.
`
`4-5 (when monitor 34 receives a signal from the remote control, monitor 34
`
`updates the state data stored in its memory); col. 5, ll. 22-25.
`
`Claim 28
`
`47.
`
`In my opinion, the '414 patent discloses the method as recited in claim
`
`27, as explained above, and further discloses supplementing the data with
`
`information obtained directly from the intended target appliance. See '414 patent at
`
`col. 5, ll. 26-30 (the data is supplemented with On/Off information obtained
`
`directly from the intended target appliance).
`
`Claim 29
`
`48.
`
`In my opinion, the '414 patent discloses the method as recited in claim
`
`27, as explained above, and further discloses that the data is maintained within a
`
`state table. See '414 patent at col. 4, ll. 4-5 and ll. 64-66; Fig. 4; col. 5, ll. 22-25
`
`(the '414 patent teaches a state table that stores parameters representative of one or
`
`more states of one or more appliances). It is my opinion that channel selection is a
`
`state, as claimed in the '468 patent.
`
`
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`Universal Remote Control Exhibit 1008: Page 16
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`
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`Claim 33
`
`49.
`
`In my opinion, the '414 patent discloses the method as recited in claim
`
`27, as explained above, and further discloses that the data is maintained locally
`
`within a device which receives the transmission. See '414 patent at col. 4, ll. 4-5;
`
`col. 5, 11. 22-25 (when monitor 34 receives a signal from the remote control,
`
`monitor 34 updates the state data stored in its memory and thus maintains the data
`
`locally in the device which receives the transmission). It is my opinion that
`
`channel selection is a state, as claimed in the '468 patent.
`
`Claim 35
`
`50.
`
`In my opinion, the '414 patent discloses a readable media, for use in a
`
`transmission monitoring device, having instructions for monitoring remote control
`
`transmissions. See '414 patent, Title ("Non-Obtrusive Programming Monitor"),
`
`Abstract ("The system monitors remote control transmissions); col. 5, ll. 20-21
`
`(instructions for monitoring the remote control transmissions are stored in a
`
`readable media).
`
`51.
`
`In my opinion, the '414 patent discloses receiving a transmission from a
`
`remote control. See '414 patent at col. 4, ll. 50-51; Fig. 2 (receiver 38, which is
`
`connected to monitor 34, receives a transmission from the remote control 16).
`
`52.
`
`In my opinion, the '414 patent discloses comparing the transmission from
`
`the remote control to a plurality of commands to determine if the transmission
`
`
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`Universal Remote Control Exhibit 1008: Page 17
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`
`
`from the remote control is intended to command an operation of an intended target
`
`appliance. See '414 patent at col. 5, ll. 18-19 (monitor 34 stores functions that
`
`correspond to the transmission of signals from the remote control); col. 5, ll. 61-64.
`
`53.
`
`In my opinion, the '414 patent discloses updating data whereby the
`
`updated data reflects a state of the intended target appliance which will result from
`
`the intended target appliance performing the operation. See '414 patent at col. 4, ll.
`
`4-5 (when monitor 34 receives a signal from the remote control, monitor 34
`
`updates the state data stored in its memory); col. 5, ll. 22-25. It is my opinion that
`
`channel selection is a state, as claimed in the '468 patent.
`
`Claim 45
`
`54.
`
`In my opinion, the '414 patent discloses the readable media as recited in
`
`claim 35, as explained above, and further discloses that the instructions perform
`
`the step of supplementing the data with information obtained directly from the
`
`intended target appliance. See '414 patent at col. 5, ll. 26-30 (the data is
`
`supplemented with On/Off information obtained directly from the intended target
`
`appliance).
`
`Claim 46
`
`55.
`
`In my opinion, the '414 patent discloses the readable media as recited in
`
`claim 35, as explained above, and further discloses that the data is maintained
`
`within a state table. See '414 patent at col. 4, ll. 4-5 and ll. 64-66; Fig. 4; col. 5, ll.
`
`
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`Universal Remote Control Exhibit 1008: Page 18
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`
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`22-25 (the '414 patent teaches a state table that stores parameters representative of
`
`one or more states of one or more appliances). It is my opinion that channel
`
`selection is a state, as claimed in the '468 patent.
`
`Claim 49
`
`56.
`
`In my opinion, the '414 patent discloses the readable media as recited in
`
`claim 35, as explained above, and further discloses that the data is maintained
`
`locally within the transmission monitoring device. See '414 patent at col. 4, ll. 4-5
`
`(when monitor 34 receives a signal from the remote control, monitor 34 updates
`
`the state data stored in its memory and thus maintains the data locally in the device
`
`which receives the transmission); col. 5, ll. 22-25. It is my opinion that channel
`
`selection is a state.
`
`The '819 publication teaches all elements recited by claims 1, 2, 27, 29, 33, 35,
`46 and 49 of the '468 Patent.
`
`57. U.S. Patent Publication No. 2001/0045819 was published on Nov. 29,
`
`2001, more than a year before the earliest priority date claimed by the '468 patent.
`
`The '819 publication teaches "[a] state-based remote control system [which]
`
`monitors the buttons selected by a user to determine the state of all external
`
`electronic devices that are to be controlled." The '819 publication, Abstract. In the
`
`'819 system, "[a]fter the [user-selected] task has been fulfilled, the electronic
`
`system updates the data to reflect the modified state of the external electronic
`
`devices." Id. As the '819 publication teaches, the "'Current State Data' is data
`
`
`
`Universal Remote Control Exhibit 1008: Page 19
`
`
`
`information relating to the current state of each of the external electronic devices
`
`12 stored within the electronic system 100." Id. at ¶[0062]. Further, the '819
`
`patent teaches that "[t]he Current State Data is updated as actions and/or tasks are
`
`performed to provide an accurate reflection of the actual current state of the
`
`external electronic devices 12." Id. This feature is further shown in Fig. 9 of the
`
`'819 patent.
`
`58. Although the '819 publication was discussed in the Background section
`
`of the '468 patent disclosure, I do not see the '819 publication listed on the '468
`
`patent as being considered by the Examiner, nor do I see the '819 publication
`
`disclosed by the applicants as material in an Information Disclosure Statement.
`
`Additionally, it was not mentioned in the prosecution history of the '468 patent.
`
`The '819 publication discloses the exact feature that the applicants argued that the
`
`prior art did not disclose and which they claimed made their purported invention
`
`novel - determining the state of an appliance from remote control transmissions.
`
`59.
`
`In my opinion, the '819 publication teaches each and every limitation of
`
`claims 1, 2, 27, 29, 33, 35, 46 and 49 of the '468 patent.
`
`Claim 1
`
`60.
`
`In my opinion, the '819 publication discloses a device intended to
`
`monitor remote control transmissions. See '819 publication at ¶[0034]; ¶[0048];
`
`Fig. 6 (results of pressing the button of the keypad 114 are transmitted to the
`
`
`
`Universal Remote Control Exhibit 1008: Page 20
`
`
`
`electronic system 100 via bus 128). The electronic system 100 is described as
`
`possibly being a separate device from the keypad. Thus, it is my opinion that the
`
`electronic system 100 may be outside of the housing to one skilled in the art
`
`reading the '819 publication. See Id. at ¶[0044], ¶[0045]; Fig. 6 (keypad 114 is
`
`separate from electronic system 100).
`
`61.
`
`In my opinion, the '819 publication discloses identifying to a recipient
`
`device a plurality of intended target appliances. See '819 publication at ¶[0043],
`
`¶[0056] (a recipient device, in the '819 publication, includes electronic system
`
`100).
`
`62.
`
`In my opinion, the '819 publication discloses receiving at the recipient
`
`device a transmission from the remote control. See '819 publication at ¶[0039]
`
`(results of pressing the buttons of the keypad 114 are transmissions received by the
`
`electronic system 100 via bus 128).
`
`63.
`
`In my opinion, the '819 publication discloses determining at the recipient
`
`device if the transmission from the remote control is intended to command an
`
`operation of one of the plurality of intended target appliance. See '819 publication
`
`at¶[0064] (in order to operate correctly, the electronic controller must determine if
`
`the transmission is intended to command operation of the intended target
`
`appliance).
`
`
`
`Universal Remote Control Exhibit 1008: Page 21
`
`
`
`64.
`
`In my opinion, the '819 publication discloses comparing the transmission
`
`from the remote control against a plurality of commands maintained within the
`
`recipient device to update data maintained within the recipient device when the
`
`transmission from the remote control is determined to be intended to command an
`
`operation of one of the plurality of intended target appliances such that the updated
`
`data reflects a state of the one of the plurality of intended target appliances which
`
`will result from the one of the plurality of intended target appliances performing
`
`the operation. See ¶[0065], Figs. 9-10.
`
`Claim 2
`
`65.
`
`In my opinion, the '819 publication discloses the method as recited in
`
`claim 1, as explained above, and further discloses that the data is maintained within
`
`a state table. See '819 publication at ¶[0071] (describing a state table that stores the
`
`data).
`
`Claim 27
`
`66.
`
`In my opinion, the '819 publication discloses a method of updating a data
`
`representative of a current state of an intended target appliance. See '819
`
`publication at ¶[0065].
`
`67.
`
`In my opinion, the '819 publication discloses receiving a transmission
`
`from a remote control. See '819 publication at ¶[0039]; ¶[0048] (results of pressing
`
`the buttons of the keypad 114 are transmissions received by the electronic system
`
`
`
`Universal Remote Control Exhibit 1008: Page 22
`
`
`
`100 via bus 128). The electronic system 100 is described as possibly being a
`
`separate device from the keypad. Thus, it is my opinion that the electronic system
`
`100 may be outside of the housing to a person skilled in the art reading the '819
`
`publication. See Id. at ¶[0044], ¶[0045]; Fig. 6 (keypad 114 is separate from
`
`electronic system 100).
`
`68.
`
`In my opinion, the '819 publication discloses comparing the transmission
`
`from the remote control to a plurality of commands to determine if the