IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Petition for Inter Partes Review under
`35 U.S.C. §§ 311–319
`and 37 C.F.R. § 42.100 et seq.
`
`
`
`
`In re Patent of: Paul V. Darbee
`Patent No.: 5,414,761
`Filed: October 8, 1993
`Issued: May 9, 1995
`Assignee: Universal Electronics Inc.
`Title: REMOTE CONTROL SYSTEM
`
`
`
`
`
`
`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. 5,414,761
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ............................................................................................ iv
`
`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 ’761 PATENT ................................................. 8
`A. Summary Of The Prosecution History of the
`’761 Patent (Ex. 1004) ............................................................... 12
`B. Summary Of The Prosecution History of the
`’313 Patent (Ex. 1005) ............................................................... 13
`C. Summary Of The Prosecution History of the
`Parent ’077 Patent (Ex. 1006) ................................................... 13
`
`V. DETAILED CLAIM CONSTRUCTION ......................................... 14
`A. Construction of Terms ............................................................... 14
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ’761 PATENT IS
`UNPATENTABLE ............................................................................ 20
`A. Claims 1, 9, 10, 14, 15, 16, and 17 are obvious over Wozniak
`(Ex. 1007), the CS-232 Manual (Ex. 1010), and Hastreiter
`(Ex. 1008) .................................................................................... 20
`B. Claims 1, 9, 10, 14, 15, 16, and 17 are obvious over Ciarcia
`(Ex. 1009) and Hastreiter (Ex. 1008) ....................................... 22
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ................................................. 24
`A. Summary of Prior Art ................................................................ 24
`1. U.S. Patent No. 4,918,439 to Wozniak et al. (“Wozniak,”
`Ex. 1007) .............................................................................. 24
`2. CORE Serial Interface (CS-232) Manual (“CS-232
`Manual,” Ex. 1010) ............................................................ 26
`3. “Build a Trainable Infrared Master Controller,” by
`Steve Ciarcia, BYTE March 1987 at pp. 113-123
`(“Ciarcia,” Ex. 1009) ......................................................... 28
`4. U.S. Patent No. 4,667,181 to Hastreiter (“Hastreiter,”
`Ex. 1008) .............................................................................. 29
`B. Detailed Grounds for Unpatentability Arguments ................. 30
`1. Ground 1: Claims 1, 9, 10, 14, 15, 16, and 17 of
`the ’761 Patent are unpatentable as obvious over
`Wozniak (Ex. 1007) in view of CS-232 Manual
`(Ex. 1010) and Hastreiter (Ex. 1008) under
`35 U.S.C. § 103(a) ............................................................... 30
`2. Ground 2: Claims 1, 9, 10, 14, 15, 16, and 17 of the ’761
`patent are unpatentable as obvious over Ciarcia (Ex.
`1009) in view of Hastreiter (Ex. 1008) under
`35 U.S.C. § 103(a) ............................................................... 48
`
`VIII. CONCLUSION ................................................................................... 58
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
`
`EXHIBIT LIST
`
`1001.
`
`U.S. Patent No. 5,414,761 (filed Oct. 8, 1993) (issued May 9, 1995) to
`
`Paul V. Darbee
`
`1002.
`
`U.S. Patent No. 5,255,313 (filed Apr. 8, 1993)(issued Oct. 19, 1993)
`
`to Paul V. Darbee
`
`1003.
`
`U.S. Patent No. 5,228,077 (filed Sep. 24, 1990) (issued Jul. 13, 1993)
`
`to Paul V. Darbee
`
`1004.
`
`Prosecution history of U.S. Patent Application Serial No. 08/134,086,
`
`which matured into the ’761 Patent
`
`1005.
`
`Prosecution history of U.S. Patent Application Serial No. 08/046,105,
`
`which matured into the ’313 Patent
`
`1006.
`
`Prosecution history of U.S. Patent Application Serial No. 07/587,326,
`
`which matured into the ’077 Patent
`
`1007.
`
`U.S. Patent No. 4,918,439 (filed Oct. 5, 1988) (issued Apr. 17, 1990)
`
`to Wozniak et al.
`
`1008.
`
`U.S. Patent No. 4,667,181 (filed Jul. 15, 1983) (issued May 19, 1987)
`
`to James Hastreiter
`
`1009.
`
`“Build a Trainable Infrared Master Controller,” by Steve Ciarcia,
`
`BYTE March 1987 at pp. 113-123
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
`
`1010.
`
`“CORE Serial Interface (CS-232) Manual” revision 3.0, Copyright @
`
`1987, 1988 by CL9
`
`
`
`1011.
`
`U.S. Patent No. 4,959,810 (filed Dec. 2, 1987) (issued Sep. 25, 1990)
`
`1012.
`
`1013.
`
`to Darbee et al.
`
`CORE Reference Manual © 1987 CL9
`
`Declaration of Stephen D. Bristow In Support of the Petition for Inter
`
`Partes Review of U.S. Patent No. 5,414,761 (“Bristow Declaration”)
`
`1014.
`
`Complaint for Patent Infringement in Universal Electronics, Inc. v.
`
`Universal Remote Control Inc., Civil Action No. SACV 13-00984,
`
`filed June 28, 2013 (“Current UEI Litigation”)
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
`
`Petitioner Universal Remote Control, Inc. (“Petitioner” “URC”) respectfully
`
`requests inter partes review of claims 1, 9, 10, 14, 15, 16, and 17 of U.S. Patent
`
`No. 5,414,761 (the “’761 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, 9, 10, 14,
`
`15, 16, and 17 of the ’761 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 the complaint in the 2013 UEI litigation on July 2,
`
`2013. The 2013 UEI Litigation remains pending. The patents-in-suit are U.S.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
`
`Patent Nos. 5,228,077; 5,255,313; 5,414,761; 5,552,917; RE39,059; 6,407,779;
`
`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. 5,414,761.
`
`In the 2013 UEI Litigation, patent owner Universal Electronics, Inc. (“UEI”) has
`
`identified specifically claims 1, 9, 10, 14, 15, 16, and 17 of the ’761 Patent as
`
`allegedly infringed in the Second Amended Complaint and the Disclosure of
`
`Asserted Claims. Accordingly, and in reliance upon UEI’s omission of express
`
`claims of infringement with regard to any other claims of the ’761 patent in the
`
`UEI Litigation to date, Petitioner seeks inter partes review of asserted claims 1, 9,
`
`10, 14, 15, 16, and 17 of the ’761 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:
`
`Lead Counsel
`
`
`
`Back-Up Counsel
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
`
`Douglas A. Miro, Reg. No. 31,643
` dmiro@ostrolenk.com
`
`Ostrolenk Faber LLP
`1180 Avenue of the Americas New
`York, NY 10036
`Telephone: (212) 596-0500
`Facsimile: (212) 382-0888
`USPTO Customer No. 02352
`
`
`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
`
`Service Information
`
`D.
`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 Parties Review. Review of seven 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. 5,414,761
`
`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 ’761 Patent is satisfied.
`
`A. Grounds For Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ’761
`
`Patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from petitioning for inter partes review of the ’761 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 ’761 Patent. The
`
`’761 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 ’761 Patent in the
`
`2013 UEI Litigation. Because the date of this petition is no more than one year
`
`from July 2, 2013, this petition complies with 35 U.S.C. § 315(b).
`
`Identification of Challenge
`
`B.
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
`
`is that the PTAB cancel as unpatentable claims 1, 9, 10, 14, 15, 16, and 17 of the
`
`’761 Patent.
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`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, 9, 10, 14, 15, 16, and 17 of the ’761 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 ’761 Patent
`
`is requested in view of the following references, each of which is prior art to
`
`claims 1, 9, 10, 14, 15, 16, and 17 of the ’761 Patent under one or more of 35
`
`U.S.C. § 102(a), (b), and/or (e):
`
`(1) U.S. Patent No. 4,918,439 to Wozniak et al. (“Wozniak”) (attached as
`
`Ex. 1007) was filed on Oct. 5, 1988, claiming priority to an application
`
`filed on June 23, 1987, and issued on Apr. 17, 1990. Wozniak is prior
`
`art to claims 1, 9, 10, 14, 15, 16, and 17 of the ’761 Patent at least under
`
`35 U.S.C. §102(a).
`
`(2) U.S. Patent No. 4,667,181 to Hastreiter (“Hastreiter”) (attached as Ex.
`
`1008) issued on May 19, 1987. Hastreiter is prior art to claims 1, 9, 10,
`
`14, 15, 16, and 17 of the ’761 Patent at least under 35 U.S.C. §102(b).
`
`(3) “CORE Serial Interface (CS-232) Manual” revision 3.0, Copyright @
`
`1987, 1988 by CL9 (“the CS-232 Manual”) (attached as Ex. 1010) was
`
`published in 1988 or earlier. The CS-232 Manual is prior art to claims
`
`1, 9, 10, 14, 15, 16, and 17 of the ’761 Patent at least under 35 U.S.C.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`§102(b).
`
`(4) “Build a Trainable Infrared Master Controller,” by Steve Ciarcia, BYTE
`
`March 1987 at pp. 113-123 (“Ciarcia”) (attached as Ex. 1009), was
`
`published in March 1987 or earlier. Ciarcia is prior art to claims 1, 9,
`
`10, 14, 15, 16, and 17 of the ’761 Patent at least under 35 U.S.C. §
`
`102(b).
`
`The Wozniak reference was considered during prosecution of the ’761
`
`Patent and its parent patents U.S. Patent No. 5,228,077 (the “’077 Patent”, attached
`
`as Ex. 1003) and U.S. Patent No. 5,255,313 (the “’313 Patent”, attached as Ex.
`
`1002). Hastreiter, the CS-232 Manual, and Ciarcia were not considered during
`
`prosecution of the ’761 Patent and its parent ’077 and ’313 patents and present
`
`new, non-cumulative technological teachings. A detailed discussion of the
`
`references and their applicability to claims 1, 9, 10, 14, 15, 16, and 17 of the ’761
`
`Patent is provided starting at Section VII.B.
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the ’761 Patent
`
`is requested on the following grounds.
`
`Ground 1. Claims 1, 9, 10, 14, 15, 16, and 17 of the ’761 Patent are obvious over
`
`Wozniak (Ex. 1007) in light of the CS-232 Manual (Ex. 1010) and Hastreiter (Ex.
`
`1008) under 35 U.S.C. § 103(a).
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`Ground 2. Claims 1, 9, 10, 14, 15, 16, and 17 of the ’761 Patent are obvious over
`
`Ciarcia (Ex. 1009) in light of Hastreiter (Ex. 1008) under 35 U.S.C. § 103(a).
`
`
`
`
`
`
`
`
`
`3. How the challenged claims are to be construed
`
`The ’761 Patent has expired. Pursuant to 37 C.F.R. § 42.100(b), the claims
`
`of an expired patent subject to inter partes review do not receive the “broadest
`
`reasonable construction in light of the specification of the patent in which [they]
`
`appear.” Petitioner below construes certain terms that are relevant to the present
`
`petition. Thus, Petitioner reserves the right to construe different or additional
`
`terms in a different proceeding, e.g., in the pending litigation.
`
`Claims 1, 9, 10, 14, 15, 16, and 17 of the ’761 Patent include means-plus-
`
`function limitations. In Section V.A below, the detailed construction of those
`
`limitations identifies the specific portions of the ’761 specification that describe the
`
`structure to each claimed function.
`
`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, 9, 10,
`
`14, 15, 16, and 17 of the ’761 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. 5,414,761
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`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 provided in an exhibit list
`
`included herein. 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 Bristow Declaration (Ex. 1013).
`
`IV. SUMMARY OF THE ’761 PATENT
`
`The ’761 Patent is entitled REMOTE CONTROL SYSTEM. Ex. 1001. The
`
`application for the ’761 Patent was filed naming Paul Darbee as a sole inventor on
`
`Oct. 8, 1993, as a continuation of the ’313 Patent, which is a continuation of the
`
`’077 Patent which, in turn, is a continuation-in-part of U.S. Pat. No. 4,959,810 (the
`
`“’810 Patent”, attached as Ex. 1011). The parent ’077 and ’313 patents also name
`
`Darbee as a sole inventor, and the grandparent ’810 Patent names four co-
`
`inventors, including Paul Darbee. As discussed below, claims 1, 9, 10, 14, 15, 16,
`
`and 17 of the ’761 Patent are not entitled to the priority date of the ’810 Patent.
`
`The ’761 Patent discloses a universal remote control:
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`
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`
`
`Ex. 1001 at FIGS. 1 and 8. The universal remote control of the ’761 Patent
`
`includes a microprocessor and a non-volatile random access memory (RAM) to
`
`store a library of code data for generating infrared light to control apparatus, like a
`
`television. Id. The RAM can be loaded with instructions and data from a
`
`programming computer (200) using a special connector (204) which attaches to
`
`and disables the microprocessor (CPU 56):
`
`
`
`
`
`Ex. 1001 at FIGs. 10 & 20. The ’761 Patent also discloses a signal coupling and
`
`converting assembly (206) that can be connected to a personal computer at one
`
`end, and to serial ports of the microprocessor at the other end. Id. at FIG. 20.
`
`Those serial ports include a transmitting port (1) and a receiving port (3) that can
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`be used “to update the code data and/or instructions in the RAM.” See Ex. 1001 at
`
`FIGS. 21 and 22 and 9:11-21 and 22:5-10; see also id. at FIG. 9B:
`
`
`
`
`
`Compared to the great-grandparent ’810 Patent, the ’761 Patent discloses
`
`additional subject matter (FIGS. 23-26) that is related to a data transmission system
`
`in which the remote control is coupled to a remote computer through a telephone
`
`line using an external modem (FIGS. 23 and 24) or an internal modem (FIG. 26) or
`
`through a television signal using a VBI decoder (FIG. 25). See Ex. 1001 at 20:61-
`
`21:58, and FIGS. 23-26:
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`
`
`Compared to the grandparent ’077 Patent, the ’761 Patent discloses additional
`
`subject matter related to “periodically coupling the computer to the remote
`
`control.” See Ex. 1001 at Abstract, 2:25-31, and 2:55-58. See also Ex. 1013
`
`(Bristow Decl.) at ¶¶28-29.
`
`Claims 1, 9, and 15 of the ’761 Patent expressly recite the “transmission
`
`system” subject matter that was added in the application for the grandparent ’077
`
`Patent. See, e.g., Ex. 1001 independent claims 1 and 15 (“coupling means for
`
`coupling … through a telephone line, through a modem and a telephone line, or
`
`through decoding means and a television set”).
`
` Claims 14-17 expressly recite the “periodically” subject matter that was
`
`added in the application for the parent ’313 Patent. See Ex. 1001 claims 14-17
`
`(“data coupling means for periodically coupling said computer to said remote
`
`control”).
`
`As the great-grandparent ’810 Patent has description of neither the claimed
`
`“periodical” coupling nor the claimed connection through modem, telephone line,
`
`and television set, it follows that claims 1, 9, 10, 14, 15, 16, and 17 of the ’761
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`Patent are not entitled to the priority date of the ’810 Patent. Thus, the earliest
`
`effective filing date of claims 1, 9, 10, 14, 15, 16, and 17 is no earlier than the
`
`actual filing date of September 24, 1990, for the ’077 Patent (and for claims 14-17,
`
`no earlier than the actual filing date of April 8, 1993, for the ’313 Patent).
`
`A.
`
`Summary Of The Prosecution History of the ’761 Patent (Ex.
`1004)
`
`The application for the ’761 Patent was filed as a continuation of the ’313
`
`Patent on Oct 8, 1993. A preliminary amendment filed with the application
`
`introduced a new Abstract and Summary, and new claims. Ex. 1004 at 119–27,
`
`142–45.
`
`The Examiner rejected the pending claims, including rejections for lack of
`
`support of the “(a) instructions for operating the remote control and/or (b) code
`
`data” limitation, and rejections under double patenting over the ’313 Patent and the
`
`Hashimoto ’655 prior art reference. Ex. 1004 at 152–54. In particular, the
`
`Examiner stated that “to receive instructions for operating the remote control such
`
`as for remotely operating the remote control to remotely program a specific
`
`controlled device is old and well known in the art, for example see Hashimoto.”
`
`Id. at 154.
`
`In response, the applicants amended the claims to recite “at least one of (a)
`
`instruction codes or (b) code data” and replaced the term “receiving port” with
`
`“receiving means.” Ex. 1004 at 163–71. For support, the applicants pointed to the
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`“instruction codes and data relative to new equipment.” Id. at 173–74; see also
`
`Ex. 1001 at 9:65-10:10 The applicants also filed a terminal disclaimer over the
`
`’077 Patent and argued that the Hashimoto ’655 remotely operates the switches
`
`and lacks receiving “at least one of instructions codes or code data.” Ex. 1004 at
`
`174. The Examiner allowed the amended claims, id. at 182–83, and the ’761
`
`Patent issued on May 9, 1995.
`
`B.
`
`Summary Of The Prosecution History of the ’313 Patent (Ex.
`1005)
`
`The application for the ’313 Patent was filed as a continuation of the ’077
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`Darbee patent on April 8, 1993. A preliminary amendment introduced new subject
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`matter related to “periodically coupling the computer to the remote control.” Ex.
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`1005 at 130–38.
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`After Examiner’s amendments and filing of a terminal disclaimer over the
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`’077 Patent, the claims were allowed. See id. at 144–152. The Examiner’s reasons
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`for allowance referred to “receiving code data for creating appropriate infrared
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`lamp driver instructions.” Id. at 151.
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`The ’313 Patent issued on October 19, 1993.
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`C.
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`Summary Of The Prosecution History of the Parent ’077 Patent
`(Ex. 1006)
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`The application for the ’077 Patent was filed as a continuation in part of the
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`’810 Patent on September 24, 1990. In the first Office Action (mailed 8/5/1991),
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`the Examiner found that the claims are not entitled to the priority date of their
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`parent, and rejected them over prior art, including the Wozniak ’439 patent. Ex.
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`1006 at 116–25.
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`In their Response of February, 1992, the applicants argued that Wozniak
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`discloses phone connection which is used to input commands, not “code data for
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`creating appropriate IR LED driver instructions.” Id. at 133–34.
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`After another rejection, the applicants amended the claims to require, in part
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`“code data for creating appropriate IR lamp driver instructions,” and argued that in
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`Wozniak the phone line only transmits commands, not the claimed “code data for
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`creating appropriate IR lamp driver instructions.” Id. at 156–67.
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`The Examiner allowed the claims without providing expressly his reasons
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`for the allowance. Id. at 170–71. The ’077 Patent (Ex. 1003) issued on July 13,
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`1993.
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`V. DETAILED CLAIM CONSTRUCTION
`
`A. Construction of Terms
`Since the ’761 Patent has expired, claim terms in the presently requested
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`inter partes review proceeding are to be construed as understood by skilled artisans
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`at the time in light of the specification and the prosecution history of the ’761
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`Patent. Petitioner below construes certain terms that are relevant to the present
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`petition. Thus, Petitioner reserves the right to construe different or additional
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`terms in a different proceedings, e.g., in the pending litigation.
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`The term “periodically coupling said computer to said remote control” was
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`understood by skilled artisans at the time to have its plain and ordinary meaning
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`that the computer and the remote control being coupled repeatedly at regular
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`intervals. See Ex. 1013 (Bristow Decl.) ¶ 31.
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`The term “instruction codes” was understood by skilled artisans at the time
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`to refer broadly to codes to operate the remote control. See e.g., Ex. 1001 at 9:40-
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`10:10 (“instruction code including code for the serial port driver”; and “instruction
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`codes and data relative to new equipment”). See Ex. 1013 (Bristow Decl.) ¶ 31.
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`Claims 1 and 14-17 recite means-plus-function limitations that should be
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`construed as follows:
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`(1) “input means … for inputting commands into [the/said]
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`remote control” (Claims 1, 14, 15, 16 and 17)
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`The function of the “input means” is inputting commands into the remote
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`control. The ’761 Patent (Ex. 1001) discloses that this function is performed by a
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`structure that includes a set of keys or push buttons (25, shown in FIGS. 1-6 and
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`expressly recited in the claims), a keyboard circuit (62), and CPU (56)
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`programmed to scan row lines (121-128) as shown, e.g., in FIG. 9B and described
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`in the specification, e.g., at 6:61-7:4 and 7:54-8:16. See Ex. 1013 (Bristow Decl.)
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`¶ 32.
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`(2) “infrared signal output means […] for supplying an infrared
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`signal to a controlled device” (Claims 1, 14, 15, 16 and 17)
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`The function of the “infrared signal output means” is supplying an infrared
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`signal to a controlled device. The ’761 Patent discloses that this function is
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`performed by a structure that includes IR lamp driver circuitry (expressly recited in
`
`claims) connected to CPU (56) and corresponding LEDs (1, 2, 3) as shown, e.g., in
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`FIGS. 7 and 9B, and described in the specification, e.g., at 6:34-47 and 9:22-23.
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`See Ex. 1013 (Bristow Decl.) ¶ 33.
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`(3) “data coupling means including receiving means coupled to
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`the CPU for enabling at least one of (a) instruction codes or (b) code
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`data for creating appropriate IR lamp driver instructions … to be
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`supplied from outside the remote control through the receiving means
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`directly to the CPU for direct entry to the memory” (Claim 1)
`
`In claim 1, the function of the “data coupling means” is enabling code data
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`for creating appropriate IR lamp driver instructions to be supplied from outside the
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`remote control through the receiving means directly to the CPU for direct entry to
`
`the memory. The ’761 Patent discloses that this function is performed by a
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`structure that includes a terminal (3) of a serial receiving port coupled directly to
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`an input port (112) of the CPU (56) as shown, e.g., in FIG. 9B and described in the
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`specification, e.g., at 9:11-21 and 9:40-43. See Ex. 1013 (Bristow Decl.) ¶ 34.
`
`Petitioner notes that the ’761 Patent discloses a serial port to receive data in
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`general. The ’761 Patent, however, does not disclose any structure specifically for
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`receiving “at least one of (a) instruction codes or (b) code data for creating
`
`appropriate IR lamp driver instructions” and directly entering such “code data”
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`into the memory, as recited in the function of the “data coupling means.” For
`
`example, the ’761 Patent only mentions a “serial port driver” in general but lacks
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`any description of software that programs the CPU (56) for handling the claimed
`
`“instruction code” or “code data” in particular. See Ex. 1013 (Bristow Decl.) ¶ 35.
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`Thus, Petitioner believes that the specification lacks the structure required for the
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`claimed “data coupling means.” However, to the extent the Board finds that
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`sufficient structure has been disclosed, Petitioner submits that the prior art
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`discloses at least that much structure as the ’761 Patent.
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`(4) “data coupling means for periodically coupling said computer
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`to said remote control for receiving from said computer memory and
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`inputting into said memory means of said remote control at least one of
`
`(a) said instruction codes or (b) said code data for creating appropriate
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`IR lamp driver instructions” (Claims 14 and 15)
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`“data coupling means for periodically coupling said computer to
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`said remote control for receiving from said computer memory and
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`inputting into said memory means of said remote control said
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`instruction codes” (Claims 16 and 17)
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`In claims 14 and 15, the function of the “data coupling means” is
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`periodically coupling the computer to the remote control for receiving from the
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`computer memory and inputting into the memory means of the remote control at
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`least one of (a) the instruction codes or (b) the code data for creating appropriate
`
`IR lamp driver instructions. In claims 16 and 17, only receiving instruction codes
`
`is required. The ’761 Patent discloses that these functions are performed by a
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`structure that includes a terminal (3) of a serial receiving port coupled directly to
`
`an input port (112) of the CPU (56) as shown, e.g., in FIG. 9B and described in the
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`specification, e.g., at 9:11-21 and 9:40-43. See Ex. 1013 (Bristow Decl.) ¶¶ 36–37.
`
`Petitioner notes that the ’761 Patent discloses structures to receive data in
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`general and “at any time.” See, e.g., Ex. 1001 at 21:66-22:10. The ’761 Patent,
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`however, lacks any structure specifically for “periodically coupling” and for
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`receiving “instruction codes” or “code data.” The ’761 Patent lacks any
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`description of how the periodic coupling is performed. Nor is described any
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`software that programs the CPU (56) for handling such “instruction codes” or
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`“code data” in particular. See Ex. 1013 (Bristow Decl.) ¶ 38. Thus, Petitioner
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`Petition for Inter Partes Review of U.S. Patent No. 5,414,761
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`believes that the specification lacks the structure required for the claimed “data
`
`coupling means.” However, to the extent sufficient structure has been disclosed,
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`Petitioner submits that the prior art discloses at least that much structure as the
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`’761 Patent.
`
`(5) “coupling means for coupling the receiving means to a
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`computer, directly, through a telephone line, through a modem and a
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`telephone line, or through decoding means and a television set” (Claim
`
`1)
`
` “said data coupling means for coupling said remote control to
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`said computer, directly, through a telephone line, through a modem and
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`a telephone line, or through decoding means and a television set”
`
`(Claims 15 and 17)
`
`In claim 1, the function of the “coupling means” is coupling the receiving
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`means to a computer (i) directly, (ii) through a telephone line, (iii) through a
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`modem and a telephone line, or (iv) through decoding means and a television set.
`
`In claims 15 and 17, the remote control is recited instead of the “receiving means”
`
`of the remote control. The functions (i), (ii), (iii) and (iv) are alternatives. The
`
`’761 Patent discloses that these functions are performed by a structure that includes
`
`terminals (1-3) of a serial port couple