throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`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.
`
`
`
`Universal Remote Control Exhibit 1008: Page 1
`
`

`

`2.
`
`I earned my Masters of Science in Electrical Engineering from the Air
`
`Force Institute of Technology in 1990. I received my Bachelor of Science in
`
`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
`
`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
`
`founding my current company, Wireless-Nets, Ltd. in April, 2000.
`
`4.
`
`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
`
`systems and maintained automatic tracking radar systems in support of tactical Air
`
`Force operations worldwide at the 75th TCF. From 1986 to 1989, I performed
`
`analog, digital, and protocol tests on various government wireless computer
`
`networks and developed testing approaches and methods as a Systems Test
`
`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
`
`I evaluated the effectiveness of wireless LAN technology for use in mobile and
`
`portable military environments, represented the Air Force as part of the IEEE
`
`802.11 Wireless LAN standards development and designed and implemented
`
`large-scale LANs and WANs for various government organizations.
`
`
`
`Universal Remote Control Exhibit 1008: Page 2
`
`

`

`5. After the Air Force, I was employed by Adroit Systems, where I
`
`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
`
`keypad, joystick or other input device that would generate a code indicating
`
`actuation of the input device and transmit the code to a receiver. The receiver
`
`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 3
`
`

`

`(New Riders) and Network Re-engineering (McGraw- Hill).
`
`8.
`
`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
`
`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
`
`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 4
`
`

`

`to as "Patent Owner") owns the '468 Patent against Petitioner URC. I have no
`
`financial interest in the Patent Owner or the '468 patent nor to my recollection have
`
`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 5
`
`

`

`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
`
`was aware of programmable universal remote controls, including techniques for
`
`receiving and decoding remote control transmissions and was aware of basic
`
`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
`
`instructed many such persons over the course of my career.
`
`Background of the Technology
`
`19.
`
`In general, remote controls were developed to control electronic home
`
`appliances, such as televisions, stereos, lights, thermostats and related devices.
`
`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 6
`
`

`

`learn the commands.
`
`20. A programmable universal remote control serves to allow a user to
`
`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 7
`
`

`

`issue from the '468 patent was well known in the art at the time the '468 patent was
`
`filed.
`
`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,
`
`which discloses the use of a state table to keep track of the states of one or more
`
`
`
`Universal Remote Control Exhibit 1008: Page 8
`
`

`

`appliances, does not appear in the '979 patent. See '979 patent. The same is true
`
`for column 6, lines 24 to 28 and column 9, line 12 to column 10, line 38 of the '468
`
`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.
`
`
`
`Universal Remote Control Exhibit 1008: Page 9
`
`

`

`
`
`26. This is the broadest reasonable interpretation in view of the specification
`
`and from my perspective as one skilled in the art.
`
`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.
`
`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 10
`
`

`

`anticipated when each and every claim limitation is found within a single reference
`
`or is a necessary part of a claim limitation. I understand that an anticipation
`
`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.
`
`
`
`Universal Remote Control Exhibit 1008: Page 11
`
`

`

`The '414 patent teaches that its system "receives signals from the remote control(s),
`
`decides to which component the signal was intended, … and stores tuning
`
`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 -
`
`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.
`
`
`
`Universal Remote Control Exhibit 1008: Page 12
`
`

`

`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 13
`
`

`

`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 14
`
`

`

`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 15
`
`

`

`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.
`
`
`
`Universal Remote Control Exhibit 1008: Page 16
`
`

`

`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
`
`
`
`Universal Remote Control Exhibit 1008: Page 17
`
`

`

`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.
`
`
`
`Universal Remote Control Exhibit 1008: Page 18
`
`

`

`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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket