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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re Patent of: Darbee
`
`Universal Remote Control, Inc.
`
`Patent No.: 5,414,761
`
`Filed: Oct. 8, 1993
`
`Issued: May 9, 1995
`
`v.
`
`Universal Electronics, Inc.
`
`Case No. IPR2014-01104
`
`Assignee: Universal Electronics Inc.
`
`Trial Paralegal: Cathy Underwood
`
`Title: REMOTE CONTROL SYSTEM
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`
`OBSERVATION REGARDING CROSS-EXAMINATION OF THOMAS
`
`GAFFORD
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on this 31st day of July, 2015.
`
`By: / Jeannie Ngai /
`Jeannie Ngai
`
`{01789941.1}
`
`

`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`Petitioner respectfully submits this Response to Patent Owner’s motion for
`
`observation regarding cross-examination during the July 13, 2015, deposition of
`
`Thomas Gafford. See Paper 32.
`
`Observations #1 & #2
`
`Patent Owner’s assertion that Mr. Gafford’s credibility is in question
`
`because he used language from two paragraphs of Mr. Bristow’s declaration is
`
`without any merit as shown by the testimony of Mr. Gafford in Ex. 2045, at 10:9–
`
`15, 13:14–14:2, 19:14–20:2, 20:13–21:4 and 24:8–26:8. See also Ex. 1063 at ¶¶
`
`15 & 18. Patent Owner omits citation to Ex. 2045 at 10:9–15, and 13:14–14:2,
`
`wherein Mr. Gafford testified that he was retained in this case because Petitioner’s
`
`original technical expert, Mr. Stephen Bristow, passed away after filing his
`
`declaration with the Petition. Patent Owner also omits citation to Ex. 2045 at
`
`19:14–20:2, wherein Mr. Gafford testified that he independently arrived at the
`
`substance of the opinions expressed in his declaration.
`
`Patent Owner has not challenged this testimony of Mr. Gafford but for
`
`paragraph 15, which provided the relevant technological field, and paragraph 18,
`
`which provided the level of ordinary skill in the art. Patent Owner, however, omits
`
`citation to Ex. 2045 at 20:13–21:3 and 24:8–26:8, wherein Mr. Gafford testified
`
`that he came up with the substance of those two paragraphs independent of Mr.
`
`Bristow, but given that he substantially agreed with Mr. Bristow on the relevant
`
`{01789941.1}
`
`- 1 -
`
`

`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`field and the level of skill, he saw no reason to perform “wordsmithing” of the
`
`form of the opinion as written by Mr. Bristow. Ex. 1063 at ¶¶ 15 & 18.
`
`Observations # 3, #4, #5, #6 & #7
`
`Patent Owner’s assertion that Mr. Gafford lacks credibility and
`
`qualifications because his education, employment, and experience did not involve
`
`universal remote controls is without any merit as shown by the testimony of Mr.
`
`Gafford in Ex. 2045 at 32:22–33:8 and 115:25–121:4. See also Ex. 1063, at ¶¶ 2–
`
`9, 15–19 and Appendix A. Patent Owner omits citation to Ex. 2045, at 32:22–
`
`33:8, wherein Mr. Gafford explains that “nobody gets a degree in remote controls”
`
`and that all subject matter relevant to remote controls was in the curriculum he
`
`took. Patent Owner also omits citation to Ex. 2045, at 115:25–121:4, wherein
`
`Mr. Gafford explains that the relevant field of study is embedded microprocessor
`
`systems and he has extensive experience in such embedded systems. Patent Owner
`
`also omits citation to Ex. 1063, at ¶¶ 2–9, 15–19 and Appendix A, wherein Mr.
`
`Gafford provides a declaration and his resume detailing his extensive experience
`
`with embedded systems.
`
`Observations # 8 and #9
`
`Patent Owner’s assertion that Mr. Gafford contradicts his construction of
`
`“code data” is without any merit as shown by Ex. 2045 at 60:13–61:20, 63:10–
`
`64:14, 64:22–:24, and 109:20–110:25. First, Patent Owner points to Ex. 2045 at
`
`{01789941.1}
`
`- 2 -
`
`

`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`64:15-20, 65:7-14, and 68:1–7, but nowhere in those sections is the term “code
`
`data” discussed. Second, Patent Owner omits citation to Ex. 2045, at 63:10–64:14
`
`and 64:22–:24, wherein Mr. Gafford explains that “machine instruction,” as Patent
`
`Owner’s counsel used in his question, was a broad, general term and, in that sense,
`
`“everything this device does it does in response to … executing some computer
`
`instruction.” Id. at 63:15-17. Third, Patent Owner also omits citation to Ex. 2045
`
`at 60:13–61:20, wherein Mr. Gafford explains that the specific reference he was
`
`asked about relates to the carrier, which “carries the codes, but is not the codes.”
`
`Id. at 61:7–20. Finally, Patent Owner omits citation to Ex. 2045, at 109:20–
`
`110:25, wherein Mr. Gafford explains the interaction of the word “instruction”
`
`with the claim term “code data” further.
`
`Observation # 10
`
`Patent Owner asserts that Mr. Gafford’s “admission” about Ciarcia’s unused
`
`pins supports Mr. Cook’s position about the lack of motivation to reduce pin-count
`
`in Ciarcia. But Mr. Cook has never expressed any opinion about motivation “to
`
`reduce pin-count in Ciarcia.” Thus, this challenge is untimely, outside the scope of
`
`all the papers, and should be disregarded. Second, this challenge is without any
`
`merit as shown by Ex. 2045 at 102:19–104:12, wherein Mr. Gafford explains that
`
`Ciarcia’s design is not optimized and one way to improve on it is to use
`
`Hastreiter’s keyboard.
`{01789941.1}
`
`- 3 -
`
`

`
`IPR2014-01104
`
`Observation #11
`
`U.S. Patent No. 5,414,761
`
`Patent Owner asserts that Mr. Gafford’s “admission” about menu
`
`instructions playing no role in the transmission of infrared codes is somehow
`
`relevant to the “code data” limitation. First, Patent Owner’s assertion that “code
`
`data” requires instructions for the transmission of infrared codes is a new
`
`argument unsupported by the record and is outside the scope of all the papers and
`
`should be disregarded. Second, Mr. Gafford explained that menu instructions play
`
`a role in the generation of infrared codes. Ex. 2045 at 80:18–:23. Finally, Patent
`
`Owner omits citation to Ex. 2045 at 80:1–17 and 111:2–112:17, wherein Mr.
`
`Gafford provides further details about the menu instructions.
`
`Observation #12
`
`Patent Owner for the first time challenges whether Ciarcia’s 74LS240 chip is
`
`a “central processing unit” and has bidirectional ports, and asserts that this is
`
`relevant to the motivation to combine Ciarcia with Hastreiter. Patent Owner has
`
`presented no expert testimony or attorney argument to support this challenge, and
`
`it is untimely, outside the scope of all of the papers, and thus should be
`
`disregarded. Patent Owner also omits citation to Ex. 2045, at 100:24–104:12,
`
`where Mr. Gafford explains that Ciarcia contains a processor with bidirectional I/O
`
`ports and the 74LS240 chip’s circuit can also be modified to create bidirectional
`
`ports.
`
`{01789941.1}
`
`- 4 -
`
`

`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`Date: July 31, 2015
`
`Respectfully submitted,
`
`/ Douglas A. Miro /
`Reg. No. 31,643
`OSTROLENK FABER LLP
`1180 Avenue of the Americas
`7th Floor
`New York, NY 10036
`(212) 382-0700
`Counsel for Petitioner
`
`{01789941.1}
`
`- 5 -
`
`

`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`CERTIFICATE OF SERVICE
`
`On the below date, I served the foregoing document on the following
`
`counsel of record via email (with counsel’s agreement):
`
`Eric J. Maiers (maierse@gtlaw.com)
`James J. Lukas (lukasj@gtlaw.com)
`Matthew J. Levinstein (levinsteinm@gtlaw.com)
`Rob R. Harmer (harmer@gtlaw.com)
`GREENBURG TRAURIG, P.C.
`77 West Wacker Drive
`Suite 3100
`Chicago, IL 60101
`
`DATED: July 31, 2015
`
`/ Jeannie Ngai /
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`7th Floor
`New York, NY 10036
`
`{01789941.1}

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