IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`In re Patent of: Arling et al.
`
`
`
`Petition for Inter Partes Review under
`35 U.S.C. §§ 311–319 and 37 C.F.R.
`§ 42.100 et seq.
`
`
`Patent No.: 7,126,468
`
`Filed: September 19, 2003
`
`Issued: October 24, 2006
`
`Assignee: Universal Electronics Inc.
`
`Title: SYSTEM AND METHOD FOR
`MONITORING REMOTE CONTROL
`TRANSMISSIONS
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,126,468
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................v
`
`I. MANDATORY NOTICES ...........................................................................1
`
`A. Real Party-In-Interest ..........................................................................1
`
`B. Related Matters.....................................................................................1
`
`C. Lead and Back-Up Counsel .................................................................2
`
`D. Service Information..............................................................................3
`
`II.
`
`PAYMENT OF FEES ...................................................................................3
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW................................4
`
`A. Grounds For Standing .........................................................................4
`
`B.
`
`Identification of Challenge...................................................................4
`
`1. Claims for which inter partes review is requested .......................5
`
`2. The specific art and statutory grounds on which the challenge
`is based ............................................................................................5
`
`3. How the challenged claims are to be construed...........................7
`
`4. How the construed claims are unpatentable under the statutory
`grounds identified in 37 C.F.R. § 42.104(b)(2) ............................7
`
`5. Supporting evidence relied upon to support the challenge ........8
`
`IV. SUMMARY OF THE '468 PATENT ..........................................................8
`
`A. Earliest Priority Date of the '468 Patent ............................................8
`
`B.
`
`Summary of the Prosecution History of the '468 Patent ..................9
`
`V. DETAILED CLAIM CONSTRUCTION................................................. 10
`
`A. Construction of Terms ...................................................................... 10
`
`B. Claims 2, 29, 46 phrase "state table"............................................... 10
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '468 PATENT IS UNPATENTABLE ........................ 11
`
`A. Claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46 and 49 Are Unpatentable
`Over the '414 Patent......................................................................... 11
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`B. Claims 1, 2, 27, 29, 33, 35, 46 and 49 Are Unpatentable Over the
`'819 Publication. ............................................................................... 12
`
`C. Claim 11 Is Unpatentable Over the '819 Publication in View of
`CORE 13
`
`D. Claims 28 and 45 Are Unpatentable Over the '819 Publication in
`View of the '587 Patent. ................................................................... 13
`
`E. Claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46 and 49 Are Unpatentable
`Over Niles .......................................................................................... 14
`
`F. Claim 11 Is Unpatentable Over Niles in view of CORE ................ 14
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE........................................................... 15
`
`A. Description of the Prior Art.............................................................. 15
`
`1. U.S. Patent No. 5,235,414 to Cohen, Exhibit 1005.................... 15
`
`2. U.S. Patent Publication No. 2001/0045819, Exhibit 1003 ........ 16
`
`3. "IntelliControl Reference Manual" Version. 8.1, April 2002 by
`Niles Audio Corporation, Exhibit 1004..................................... 17
`
`4. Ron Karr, et al., CORE Reference Manual; CL9, ©1987,
`Exhibit 1006 ................................................................................. 18
`
`5. U.S. Patent No. 6,545,587 to Hatakeyama, et al., Exhibit 100719
`
`B. Detailed Grounds for Unpatentability Arguments ........................ 19
`
`1. Ground 1: Claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46 and 49 are
`anticipated by the '414 patent under 35 U.S.C. § 102, and if not
`anticipated, are rendered obvious by the '414 patent under 35
`U.S.C. § 103.................................................................................. 19
`
`2. Ground 2: Claims 1, 2, 27, 29, 33, 35, 46 and 49 are anticipated
`by the '819 publication under 35 U.S.C. § 102 and if not
`anticipated, are rendered obvious by the '819 publication
`under 35 U.S.C. § 103.................................................................. 34
`
`3. Ground 3: Claim 11 is rendered obvious by the '819
`publication in view of CORE under 35 U.S.C. § 103............... 44
`
`4. Ground 4: Claims 28 and 45 are rendered obvious by the '819
`publication in view of the '587 patent under U.S.C. § 103 ...... 45
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`5. Ground 5: Claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46 and 49 are
`anticipated by Niles under 35 U.S.C. § 102, and if not
`anticipated, are rendered obvious by Niles under 35 U.S.C. §
`103. 46
`
`6. Ground 6: Claim 11 is rendered obvious by Niles in view of
`CORE under U.S.C. § 103 .......................................................... 58
`
`VIII. CONCLUSION ........................................................................................... 60
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`EXHIBIT LIST
`
`1001.
`
`U.S. Patent No. 7,126,468 (filed Sep. 19, 2003) to Arling et al.
`
`1002.
`
`Prosecution history of U.S. Patent Application Serial No. 10/665,650,
`
`which matured into the '468 Patent.
`
`1003.
`
`U.S. Patent Publication No. 2001/0045819 (filed Mar. 12, 2001;
`
`published Nov. 29, 2001) to Harris et al.
`
`1004.
`
`"IntelliControl Reference Manual" Version. 8.1, April 2002 by Niles
`
`Audio Corporation.
`
`1005.
`
`U.S. Patent No. 5,235,414 (filed May 21, 1990; issued Aug. 10, 1993)
`
`to Cohen.
`
`1006.
`
`Ron Karr, et al., CORE Reference Manual; CL9, ©1987 ("CORE").
`
`1007.
`
`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.
`
`- v -
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`Petitioner Universal Remote Control, Inc. ("Petitioner") respectfully requests
`
`inter partes review of claims 1, 2, 11, 27-29, 33, 35, 45, 46 and 49 of U.S. Patent
`
`No. 7,126,468 (the "'468 Patent," attached as Ex. 1001) in accordance with 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq.
`
`I. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following
`
`mandatory disclosures:
`
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Universal Remote
`
`Control, Inc. is the real party-in-interest.
`
`B. Related Matters
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that claims 1, 2, 11, 27-
`
`29, 33, 35, 45, 46 and 49 of the '468 Patent are involved in the litigation presently
`
`styled Universal Electronics Inc., v. Universal Remote Control, Inc., Ohsung
`
`Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No. SACV 13-
`
`00984 AG (JPRx) (C.D. Cal.), filed on June 28, 2013 ("2013 UEI Litigation").
`
`Petitioner was the sole defendant in the 2013 UEI litigation on July 2, 2013 and,
`
`consequently, the only defendant served with a complaint in the 2013 UEI
`
`Litigation on July 2, 2013. The patents-in-suit in the 2013 UEI Litigation are U.S.
`
`Patents Nos. 5,228,077, 5,255,313, 5,414,761, 5,552,917, RE39,059, 6,407,779,
`
`
`
`- 1 -
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`7,831,930, 7,126,468, 7,589,642, and 8,243,207.
`
`This Petition for inter partes review is directed to U.S. Patent No. 7,126,468.
`
`In the 2013 UEI Litigation, patent owner Universal Electronics, Inc. ("UEI") has
`
`identified specifically claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46, and 49 of the '468
`
`patent as allegedly infringed in the Second Amended Complaint. Accordingly, and
`
`in reliance upon UEI's omission of express claims of infringement with regard to
`
`any other claims of the '468 patent in the UEI Litigation to date, Petitioner seeks
`
`inter partes review of asserted claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46, and 49 of
`
`the '468 patent.
`
`Petitions for inter partes review corresponding to the asserted claims of the
`
`remaining nine patents in the UEI Litigation will also soon be filed. In light of
`
`this, the Patent Trial and Appeal Board (PTAB) may wish to assign one or more of
`
`any of these other inter partes review actions related to this matter to a common,
`
`single panel of Administrative Patent Judges for administrative efficiency
`
`regarding either coordination or consolidation.
`
`C.
`
`Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel:
`
`
`
`
`
`
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`- 2 -
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`Lead Counsel
`Doug Miro, Reg. No. 31,643
`Ostrolenk Faber LLP
`1180 Avenue of the Americas
`New York, NY 10036
`Telephone: (212) 596-0500
`Facsimile: (212) 382-0888
`dmiro@ostrolenk.com
`
`USPTO Customer No. 02352
`
`
`
`
`D.
`
`Service Information
`
`Back-Up Counsel
`Peter H. Kang, Reg. No. 40,350
`pkang@sidley.com
`Theodore W. Chandler, Reg. No. 50,319
`tchandler@sidley.com
`Ferenc Pazmandi, Reg. No. 66,216
`fpazmandi@sidley.com
`Sidley Austin LLP
`1001 Page Mill Rd.
`Building One
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (650) 565-7100
`USPTO Customer No. 37803
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`II.
`
`PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge to Deposit Account No.
`
`15-0700 $9,000 for the request fee required by 37 C.F.R. § 42.15(a)(1) and
`
`$14,000 for the Post-Institution fee required by 37 C.F.R § 42.15(a)(2) for this
`
`Petition for Inter Partes Review. Review of eleven claims is being requested, so
`
`no excess claims fee is included in this fee calculation. The undersigned further
`
`authorizes payment for any additional fees that might be due in connection with
`
`this Petition to be charged to the above referenced Deposit Account.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the '468 Patent is satisfied.
`
`A. Grounds For Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the '468
`
`Patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from petitioning for inter partes review of the '468 Patent on the grounds
`
`identified herein. Neither Petitioner, nor any party in privity with Petitioner, has
`
`filed a civil action challenging the validity of any claim of the '468 patent. The
`
`'468 patent has not been the subject of a prior inter partes review by Petitioner or a
`
`privy of Petitioner.
`
`Petitioner certifies this petition for inter partes review is timely filed.
`
`Specifically, this petition is filed within one year of July 2, 2013, which is the date
`
`URC was served with a Complaint for patent infringement of the '468 patent in the
`
`UEI Litigation. Because the date of this petition is no more than than one year
`
`from July 2, 2013, this petition complies with 35 U.S.C. § 315(b).
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
`
`is that the PTAB cancel as unpatentable claims 1, 2, 11, 27-29, 33, 35, 45, 46 and
`
`49 of the '468 Patent.
`
`
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`- 4 -
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`1.
`
`Claims for which inter partes review is requested
`
`Pursuant to 37 C.F.R. § 42.104(b)(1), Petitioner requests inter partes review
`
`of claims 1, 2, 11, 27-29, 33, 35, 45, 46 and 49 of the '468 Patent.
`
`2.
`
`The specific art and statutory grounds on which the
`challenge is based
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '468 Patent
`
`is requested in view of the following references, each of which is prior art to the
`
`'468 Patent under one or more of 35 U.S.C. § 102(a), (b), and/or (e):
`
`(1) U.S. Patent Publication No. 2001/0045819 to Harris et al. (the "'819
`
`publication") was filed on Mar. 12, 2001 and published on Nov. 29,
`
`2001. The '819 publication is thus prior art to the '468 patent under at
`
`least 35 U.S.C. § 102(b).
`
`(2) IntelliControl Reference Manual, Version. 8.1, was published April
`
`2002 by Niles Audio Corporation ("Niles"). Niles is prior art to the '426
`
`Patent under at least 35 U.S.C. § 102(b).
`
`(3) U.S. Patent No. 5,235,414 to Cohen (the "'414 patent") was filed on May
`
`21, 1990 and issued on Aug. 10, 1993. The '414 patent is prior art to the
`
`'468 patent under at least U.S.C. § 102(b).
`
`(4) CORE Reference Manual, Ron Karr, et al., CL9 ("CORE") has a
`
`copyright date of 1987. CORE is prior art to the '468 patent under at
`
`
`
`- 5 -
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`least U.S.C. § 102(b).
`
`(5) U.S. Patent No. 6,545,587 to Hatakeyama, et al. (the "'587 patent") was
`
`filed on Jan. 13, 1999 and issued on Apr. 8, 2003. The '587 patent is
`
`prior art to the '468 patent under at least U.S.C. § 102(e).
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '468 Patent
`
`is requested on the following grounds.
`
`Ground 1. Claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46 and 49 of the '468
`
`patent are anticipated by the '414 patent under 35 U.S.C. § 102(b), and if not
`
`anticipated, are obvious in light of the '414 patent under 35 U.S.C. § 103.
`
`Ground 2. Claims 1, 2, 27, 29, 33, 35, 46 and 49 of the '468 patent are
`
`anticipated by the '819 publication under 35 U.S.C. § 102(b), and if not anticipated,
`
`are obvious in light of the '819 publication under 35 U.S.C. § 103.
`
`Ground 3. Claim 11 of the '468 patent is obvious in light of the '819
`
`publication in view of CORE under 35 U.S.C. § 103.
`
`Ground 4. Claims 28 and 45 of the '468 patent are obvious in light of the
`
`'819 publication in view of the '587 patent under 35 U.S.C. § 103.
`
`Ground 5. Claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46 and 49 of the '468
`
`patent are anticipated by Niles under 35 U.S.C. § 102(b), and if not anticipated, are
`
`obvious in light of Niles under 35 U.S.C. § 103.
`
`Ground 6. Claim 11 of the '468 patent is obvious in light of Niles in view
`
`
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`- 6 -
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`of CORE under U.S.C. § 103.
`
`3.
`
`How the challenged claims are to be construed
`
`Pursuant to 37 C.F.R. § 42.104(b)(3), the claims of a patent subject to inter
`
`partes review receive the "broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear." 37 C.F.R. § 42.100(b). If
`
`Patent Owner contends a claim limitation should have a meaning other than that
`
`conveyed by the ordinary meaning of the terms of the claim to a person of ordinary
`
`skill in light of the broadest reasonable construction standard, that contention
`
`should be disregarded if no amendment to the claims compliant with 35 U.S.C. §
`
`112 is made conforming the claim language to Patent Owner's proposed meaning.
`
`See 77 Fed. Reg. 48764 (August 14, 2012). Cf., In re Youman, 679 F.3d 1335,
`
`1343 (Fed. Cir. 2012).
`
`4.
`
`How the construed claims are unpatentable under the
`statutory grounds identified in 37 C.F.R. § 42.104(b)(2)
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how claims 1, 2, 11,
`
`27-29, 33, 35, 45, 46 and 49 of the '468 patent are unpatentable under the statutory
`
`grounds identified above, including an identification of where each element is
`
`found in the prior art patents or printed publications, is provided in Section VII.B,
`
`below.
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`5.
`
`Supporting evidence relied upon to support the challenge
`
`Pursuant to 37 C.F.R. § 42.104(b)(5), the exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are included in an exhibit list
`
`provided above. The following text of the present Petition identifies the relevance
`
`of the evidence to the challenges raised and identifies specific portions of the
`
`evidence to support the challenges raised under the grounds of unpatentability.
`
`Further supporting evidence, including detailed discussions of the respective prior
`
`art references, is provided in the Geier Declaration (Ex. 1008).
`
`IV. SUMMARY OF THE '468 PATENT
`
`The '468 patent, titled SYSTEM AND METHOD FOR MONITORING
`
`REMOTE CONTROL TRANSMISSIONS, monitors remote control transmissions
`
`for the purpose of updating a database to track the state of one or more remotely-
`
`controllable appliances. Ex. 1001, Abstract.
`
`A.
`
`Earliest Priority Date of the '468 Patent
`
`Patent Application Serial No. 10/665,650 (the "'650 application"), which
`
`matured into the '468 patent, was filed on September 19, 2003. 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"). Ex. 1001 at p. 1.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`As is evidenced by comparing the claims and specification of the '468 patent
`
`to the specification of the '979 Patent, the claims of the '468 patent are based on
`
`new matter that is not disclosed in the '979 patent. Ex. 1008 at ¶24; Ex. 1010.
`
`Therefore, the claims at issue in '468 patent are not entitled to the earlier priority
`
`date. The earliest effective filing date of the '468 patent is the actual filing date of
`
`the '650 application, September 19, 2003. Ex. 1008 at ¶24.
`
`B.
`
`Summary of the Prosecution History of the '468 Patent
`
`The '650 application was originally filed with 70 claims, six of which were
`
`independent. Ex. 1002 at p. 4. All of the claims were rejected under 35 U.S.C. §
`
`103(a) in light of U.S. Patent No. 4,959,810 to Darbee et al. ("Darbee '810") in
`
`view of U.S. Patent No. 6,725,281 to Zintel et al. ("Zintel"). In a response dated
`
`March 3, 2006, the applicant canceled six claims and made many small
`
`amendments to "further clarify what is regarded as the invention and to ensure
`
`proper antecedent bases." In addition, the applicants differentiated the purported
`
`invention from the prior art by arguing that Zintel reads the current state of a
`
`connected appliance directly from the electrical or mechanical components of said
`
`appliance instead of determining the state of an appliance from remote control
`
`transmissions. Exhibit 1002, March 03, 2006 Response, pp. 16-17.
`
`A Notice of Allowability was issued on May 24, 2006, with no reasons for
`
`allowance provided in the record.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`V. DETAILED CLAIM CONSTRUCTION
`
`A. Construction of Terms
`
`Claims in the presently requested inter partes review proceeding are to be
`
`construed in accordance with the broadest reasonable construction in light of the
`
`specification of the '468 patent in accordance with 37 C.F.R. § 42.100(b). Unless
`
`otherwise indicated, the terms of the '468 patent are used in their ordinary and
`
`customary sense as one skilled in the relevant field would understand them under
`
`the broadest reasonable construction standard. Further, Petitioner reserves all
`
`rights, as it is entitled under applicable law, to assert the same or different claim
`
`constructions for the '468 patent under the different standards and different
`
`applicable court procedures in the pending UEI Litigation.
`
`B. Claims 2, 29, 46 phrase "state table"
`
`The '468 specification refers to a "state table" very generically, as one
`
`"which stores parameters representative of one or more states of one or more
`
`appliances." Ex. 1008 at ¶25; Ex. 1001 at col. 4, ll. 65-66. The specification
`
`points to Fig. 4. as an example of such a table. As can be seen, the left-hand
`
`column lists a function and the right-hand column lists an associated state. Ex.
`
`1008 at ¶25.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`
`
`Ex. 1001, Fig. 4. Therefore, a state table, under the broadest reasonable
`
`construction in light of the specification of the '468 patent, simply associates one or
`
`more functions each with a corresponding state. Ex. 1008 at ¶¶25-26.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '468 PATENT IS UNPATENTABLE
`
`Petitioner provides a number of prior art publications demonstrating
`
`anticipation and obviousness grounds of unpatentability of the claims of the '468
`
`patent, regardless of the priority date accorded them. The following descriptions
`
`will demonstrate these grounds of unpatentability in detail, and they provide a
`
`reasonable likelihood that at least one challenged claim of the '468 patent is
`
`unpatentable.
`
`A. Claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46 and 49 Are Unpatentable
`Over the '414 Patent.
`
`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. Although the '414 patent was
`
`discussed in the Background section of the '468 patent disclosure (misdirecting the
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
`
`reader to other features of the '414 invention), the prior art '414 patent was not
`
`considered by the Examiner, nor did applicants disclose the '414 patent as a
`
`material reference in an Information Disclosure Statement. The '414 patent is not
`
`cumulative of the technical teachings of other references discussed during the
`
`prosecution of the '468 patent. In fact, 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. See Ex. 1008 at ¶33.
`
`B. Claims 1, 2, 27, 29, 33, 35, 46 and 49 Are Unpatentable Over the
`'819 Publication.
`
`The '819 publication teaches each and every limitation of claims 1, 2, 27, 29,
`
`33, 35, 46 and 49 of the '468 patent. Although the '819 publication was discussed
`
`in the Background section of the '468 patent disclosure, the '819 publication was
`
`not considered by the Examiner, nor did the applicants disclose the '819
`
`publication as a material reference in an Information Disclosure Statement. The
`
`'819 publication is not cumulative of the technical teachings of other references
`
`discussed during the prosecution of the '468 patent. In fact, the '819 publication
`
`discloses the exact feature that the applicants argued that the prior art did not
`
`disclose and which made their purported invention novel - determining the state of
`
`an appliance from remote control transmissions. See Ex. 1008 at ¶58.
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
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`C. Claim 11 Is Unpatentable Over the '819 Publication in View of
`CORE
`
`The '819 publication discloses a device that updates a state table based upon
`
`the commands to be sent from a remote control to a target device. '819 publication,
`
`Abstract. The '819 publication is not limited to and does not require any specific
`
`manner of updating the commands known by the device. The CORE reference
`
`teaches that commands can be learned from a remote control. CORE at p. v. This
`
`aspect of CORE would have been an obvious, straightforward, and easy-to-
`
`implement feature for the operation of the remote control disclosed in the '819
`
`publication. Thus, it would have been obvious to one of ordinary skill in the art to
`
`combine the teachings of the '819 publication with CORE to render obvious '468
`
`claim 11. Ex. 1008 at ¶¶78-79.
`
`D. Claims 28 and 45 Are Unpatentable Over the '819 Publication in
`View of the '587 Patent.
`
`The '819 publication discloses a device that updates a state table based upon
`
`the commands sent from a remote control to a target device. The '587 patent
`
`discloses a bidirectional remote control, whereby the remote control can receive
`
`feedback from the device it is controlling. This aspect of the '587 patent would
`
`have been an obvious, straightforward, and easy-to-implement feature for the
`
`operation of the remote control disclosed in the '819 publication. It would have
`
`been obvious to combine the teachings of these references because it is obvious to
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
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`be able to supplement the data in the '819 publication with information obtained
`
`directly from the intended target appliance and to confirm this information via
`
`bidirectional communication, as taught by the '587 patent. Ex. 1008 at ¶¶82-83.
`
`One skilled in the art reading the '819 publication in view of the '587 patent would
`
`understand claims 28 and 45 of the '468 patent to be obvious and thus
`
`unpatentable. Id.
`
`E. Claims 1, 2, 11, 27, 28, 29, 33, 35, 45, 46 and 49 Are Unpatentable
`Over Niles
`
`Niles teaches each and every limitation of claims 1, 2, 11, 27, 28, 29, 35, 45,
`
`46, and 49 of the '468 patent. Niles is not cumulative of any of the technical
`
`teachings in the other references discussed during the prosecution of the '468
`
`patent. In fact, Niles discloses the exact feature that the applicants argued that the
`
`prior art did not disclose and which made their purported invention novel -
`
`determining the state of an appliance from remote control transmissions.
`
`F.
`
`Claim 11 Is Unpatentable Over Niles in view of CORE
`
`Niles teaches a system that includes a device that updates status information
`
`regarding various controlled devices. The Main System Unit (MSU) of Niles has
`
`an IR Code Memory capable of storing over 1200 learned commands. Petitioner
`
`alleges that Niles discloses commands learned from the remote control, either
`
`expressly, inherently, or as a matter of obviousness to the skilled artisan.
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
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`However, regardless of whether Niles is determined to either anticipate or render
`
`obvious this feature, one skilled in the art reading Niles in view of CORE would
`
`conclude that claim 11 of the '468 patent is obvious. The CORE reference teaches
`
`that commands can be learned from a remote control. CORE at p. v. This aspect
`
`of CORE would have been an obvious, straightforward, and easy-to-implement
`
`feature for the operation of the remote control disclosed in Niles. Thus, it would
`
`have been obvious to one of ordinary skill in the art to combine the teachings of
`
`Niles with CORE to render obvious '468 claim 11. Ex. 1008 at ¶1087.
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioner provides in the following
`
`description a detailed comparison of the prior art references and a detailed
`
`comparison of the claimed subject matter to these prior art references, specifying
`
`where each element of challenged claim is found in the prior art references.
`
`Further information and details supporting the unpatentability of claims 1, 2, 11,
`
`27-29, 33, 35, 45, 46 and 49 of the '468 patent over the prior art are found in the
`
`Geier Declaration (Ex. 1008), hereby incorporated by reference.
`
`A. Description of the Prior Art
`
`1.
`
`U.S. Patent No. 5,235,414 to Cohen, Exhibit 1005
`
`The '414 patent issued on Aug. 10, 1993, almost ten years before the earliest
`
`priority date claimed by the '468 patent and is thus prior art to the '468 patent under
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
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`at least 35 U.S.C. § 102(b). The '468 patent discusses the '414 patent in its
`
`Background section, misdirecting the reader to other features of the '414 patent.
`
`Indeed, the features of the '414 patent described in the Background section of the
`
`'468 patent anticipate U.S. Patent 7,589,642, which is also asserted in the UEI
`
`Litigation and is the subject of a concurrently-filed Inter Partes Review petition
`
`filed by this Petitioner (and thus, may warrant consideration for assignment of this
`
`Inter Partes Review action with the Inter Partes Review action concerning the
`
`'642 patent to a common panel of Administrative Patent Judges, as discussed in
`
`Section I.B. above).
`
`The '414 patent teaches "[a] meter for unobtrusively monitoring the tuning
`
`of a home entertainment center." Ex. 1005, Abstract. 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
`
`a person of ordinary skill, that the '414 patent discloses the purported invention of
`
`the '468 patent. Ex. 1008 at ¶32.
`
`2.
`
`U.S. Patent Publication No. 2001/0045819, Exhibit 1003
`
`The '819 publication was published on Nov. 29, 2001, more than a year
`
`before the earliest priority date claimed by the '468 patent and is thus prior art to
`
`the '468 patent under at least 35 U.S.C. § 102(b). The '819 publication teaches "[a]
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
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`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."
`
`Ex. 1003, 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 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
`
`'819 Figure 9. Therefore, the '819 publication discloses the same system claimed
`
`in the '468 patent.
`
`3.
`
`"IntelliControl Reference Manual" Version. 8.1, April 2002
`by Niles Audio Corporation, Exhibit 1004
`
`The "IntelliControl Reference Manual," version 8.1, by the Niles Audio
`
`Corporation ("Niles"), is dated April 2002, which is more than a year before the
`
`earliest priority date claimed by the '468 patent and is thus prior art to the '468
`
`patent under at least 35 U.S.C. § 102(b). Niles discloses a system including "an
`
`ergonomically designed RF (radio frequency) Tabletop Remote Control and an
`
`'intelligent' Main System Unit (MSU)." See Ex. 1004, p. 1. Niles discloses that the
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,126,468
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`"Main System Unit is the 'brain' of the IntelliControl system. Once an RF
`
`command is issued from the Tabletop Remote, the MSU processes the command
`
`and controls all functions of the system." Id. at p.4. Niles also discloses that the
`
`state of the input to a target appliance can be stored and updated. Id. at p. 32
`
`("Using the 'Input Manager' method, the system will be able to keep track of what
`
`input th