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IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re Patent of: Darbee
`
`Patent No.: 5,414,761
`
`Filed: October 8, 1993
`
`Issued: May 9, 1995
`
`Assignee: Universal Electronics Inc.
`
`Title: REMOTE CONTROL SYSTEM
`
`
`
`
`
`Universal Remote Control, Inc.
`
` v.
`
`Universal Electronics, Inc.
`
`Case No. IPR2014-01104
`
`Trial Paralegal: Cathy Underwood
`
`MOTION TO SEAL PURSUANT TO 37 C.F.R. §§ 42.14 and 42.54(a)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`24th day of June, 2015
`
`
`By: /Jeannie Ngai/
` Jeannie Ngai
`
`

`

`
`
`EXHIBIT LIST
`
`Exhibit 1001: U.S. Patent No. 5,414,761 to Paul V. Darbee
`
`Exhibit 1002: Prosecution history of U.S. Patent Application Serial No.
`
`08/134,086
`
`Exhibit 1007: U.S. Patent No. 4,918,439 to Wozniak
`
`Exhibit 1008: U.S. Patent No. 4,667,181 to James Hastreiter
`
`Exhibit 1009: “Build a Trainable Infrared Master Controller,” by Steve Ciarcia,
`
`BYTE March 1987 at pp. 113-123
`
`Exhibit 1011: U.S. Patent No. 4,959,810 to Darbee et al.
`
`Exhibit 1013: Declaration of Stephen D. Bristow In Support of the Petition for
`
`Inter Partes Review of U.S. Patent No. 5,414,761
`
`Exhibit 1050: Deposition Transcript of Ramzi Ammari - 6.10.15
`
`Exhibit 1051: Deposition Transcript of Ramzi Ammari - 6.11.15
`
`Exhibit 1052: Deposition Transcript of Alex Cook - 6.15.15
`
`Exhibit 1053: Deposition Transcript of Alex Cook - 6.16.15
`
`Exhibit 1054: Deposition Transcript of Alex Cook - 6.17.15
`
`Exhibit 1055: Prosecution history of U.S. Patent Application Serial No.
`
`07/127,999
`
`
`
`
`
`i
`
`

`

`Exhibit 1056: Complaint for Patent Infringement in Universal Electronics, Inc. v.
`
`Universal Remote Control Inc., Civil Action No. SACV 12-00329, filed March 2,
`
`2012
`
`Exhibit 1057: Exhibit A to URC’s Opposition to Motion in Limine #5
`
`Exhibit 1058: Order Granting URC’s Motion for Attorneys’ Fees
`
`Exhibit 1059: Defendant Universal Remote Control, Inc.’s Supplemental
`
`Submission re: Motion for Attorneys’ Fees
`
`Exhibit 1060: Declaration of Peter H. Kang in Support of Defendant Universal
`
`Remote Control, Inc.’s Supplemental Submission re: Motion for Attorneys’ Fees
`
`Exhibit 1061: U.S. Patent No. 4,623,887A – Welles
`
`Exhibit 1063: Declaration of Thomas A. Gafford
`
`
`
`
`
`ii
`
`

`

`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`In accordance with 37 C.F.R. §§ 42.14 and 42.54(a), Universal Remote
`
`Control, Inc. (“URC” or “Petitioner”) respectfully submits this Motion to Seal
`
`regarding materials submitted in support of its Reply to Response of Patent Owner.
`
`Patent Owner Universal Electronics, Inc. previously submitted its own
`
`Motion to Seal (Paper No. 15, April 1, 2015) with its Response to the Inter Partes
`
`Petition, requesting that the Board enter a proposed protective order. See Ex. 2065.
`
`Petitioner does not object to the proposed protective order and agrees to
`
`follow the terms therein by redacting confidential information contained in the
`
`documents to be submitted with its Reply. The confidential information contained
`
`in the documents was designated confidential by counsel for Patent Owner.
`
`Petitioner has filed a redacted version of its Reply available for public
`
`viewing and unredacted, confidential versions of the Reply and Exs 1050 and 1051
`
`for viewing only by counsel and the Board. Counsel for Patent Owner has
`
`designated the entirety of Exs. 1050 and 1051 as confidential.
`
`Respectfully submitted,
`
`/Douglas A. Miro/
`Douglas A. Miro
`Reg. No. 31,643
`OSTROLENK FABER LLP
`1180 Avenue of the Americas, 7th Fl.
`New York, NY 10036
`(212) 382-0700
`Counsel for Petitioner
`
`
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`
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`
`
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`
`
`1
`
`
`Date: June 24, 2015
`
`
`
`
`
`
`
`
`
`

`

`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Eric J. Maiers, Reg. No. 59,614
`James J. Lukas, Reg. No. 59,114
`Matthew J. Levinstein, Pro Hac Vice
`Rob R. Harmer, Reg. No. 68,048
`GREENBURG TRAURIG, P.C.
`77 West Wacker Drive
`Suite 3100
`Chicago, IL 60101
`Maierse@gtlaw.com
`lukasj@gtlaw.com
`levinsteinm@gtlaw.com
`harmer@gtlaw.com
`chiipmail@gtlaw.com
`
`
`
`
`DATED: June 24, 2015
`
`
`
`
`
`
`
`
`
`
`
`/Jeannie Ngai/
` Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`New York, NY 10036
`
`
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`

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