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 TO
`
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`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
`
`{01789916.1}
`
`
`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 TO
`
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`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
`
`{01789916.1}
`
`
`
`IPR2014-01104
`
`I.
`
`Introduction
`
`U.S. Patent No. 5,414,761
`
`Petitioner opposes Patent Owner’s motion to exclude the datasheet for an
`
`Intel 8254 Programmable Interval Timer (Ex. 1043) and pages 14–15 of
`
`Petitioner’s Reply. See Paper 30. Patent Owner argues that the datasheet should
`
`be excluded because it is irrelevant under Fed. R. Evid. 401. Patent Owner reasons
`
`that the datasheet is irrelevant because it was not incorporated by reference into the
`
`Ciarcia reference and was not a basis for institution of this trial. Patent Owner’s
`
`reasoning is misguided. The datasheet is relevant because it is extrinsic evidence
`
`that proves the understanding skilled artisans would have had of material which is
`
`inherent in the disclosure of the Ciarcia reference, and thus proves Ciarcia contains
`
`the claim limitation “code data.”
`
`II.
`
`Legal Authority
`“Evidence is relevant if: (a) it has any tendency to make a fact more or less
`
`probable than it would be without the evidence; and (b) the fact is of consequence
`
`in determining the action.” Fed. R. Evid. 401 (emphasis added).
`
`“To serve as an anticipation when the reference is silent about the asserted
`
`inherent characteristic, such gap in the reference may be filled with recourse to
`
`extrinsic evidence. Such evidence must make clear that the missing descriptive
`
`matter is necessarily present in the thing described in the reference, and that it
`
`would be so recognized by persons of ordinary skill.” Emi Grp. North Am. v.
`
`{01789916.1}
`
`- 1 -
`
`
`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`Cypress Semiconductor Corp., 268 F.3d 1342, 1350–51 (Fed. Cir. 2001) (quoting
`
`Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991));
`
`Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012) (affirming
`
`a finding of obviousness based on an inherent property of an obvious
`
`combination).
`
`III. Background
`
`Patent Owner’s Response for the first time construed the claim term “code
`
`data” as “instructions and timing information,” and argued that, under that
`
`construction, Ciarcia did not disclose “code data.” Paper 14 at 13. To be
`
`conservative, Petitioner replied that even under Patent Owner’s incorrect
`
`construction of the term “code data,” that element was disclosed in the reference:
`
`Steve Ciarcia, Build a Trainable Infrared Master Controller, BYTE magazine
`
`(March 1987) (“Ciarcia”). Paper 23 (Petitioner’s Reply) at 14–15.
`
`Specifically, Petitioner pointed out that one of Ciarcia’s electronic
`
`components, an 8254 Programmable Interval Timer (an “8254 PIT”), “is
`
`programmed to generate the IR signals, and the corresponding ‘times are stored in
`
`external data RAM.’” Paper 23 at 14–15. The 8254 datasheet explains expressly
`
`the details of this programming which were well known to skilled artisans at the
`
`time, including the instructions and timing information which are used to program
`
`the 8254 PIT, which include, for example, “control words.” Ex. 1043 (8254
`
`{01789916.1}
`
`- 2 -
`
`
`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`Datasheet) at 3-66 and 3-67. The datasheet’s disclosure thus proved that
`
`“instructions and timing information” were inherent in Ciarcia and this inherent
`
`disclosure was recognized by skilled artisans at the time (who could have read the
`
`datasheet). Id.
`
`IV. Analysis
`
`The datasheet is relevant to whether or not, under Patent Owner’s claim
`
`construction, Ciarcia includes the “code data” claim limitation. Patent Owner
`
`admits that Ciarcia uses an 8254 PIT. See Ex. 1005 (Ciarcia) at 118; Paper 31 at 3.
`
`Even laypersons—not to mention persons of skill in the art—are aware that
`
`electronics come with manuals. Here, the manual for the 8254 PIT is termed a
`
`“datasheet.” See Ex. 1043. While Ciarcia does not reprint each datasheet for each
`
`electronic component used in the Ciarcia device, that does not mean the details of
`
`those electronic components must be forever lost in mystery. Indeed, the 8254
`
`datasheet was well known to skilled artisans at the time and even Patent Owner’s
`
`expert has admitted that he used the 8254 datasheet for designs. See Ex. 1053 at
`
`371:16–19 (“Q. Have you ever seen the data sheet for the 8254 prior to today? A.
`
`Yes. I've used the 8254 in designs where I've designed and wrote code.”).
`
`Where a prior art reference is silent as to a given characteristic of the prior
`
`art, the reference can still disclose that characteristic to skilled artisans if it is
`
`inherently present, and that inherency can be proven with extrinsic evidence. See
`
`{01789916.1}
`
`- 3 -
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`
`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`Emi, 268 F.3d at 1350–51. Here, the datasheet explains the operation of the 8254
`
`PIT. See Ex. 1005 (Ciarcia) at 118 (“An 8254 programmable interval timer
`
`provides the high-speed logic required to generate signals with microsecond timing
`
`resolution.”); Ex. 1043 at 3-67 (explaining the “Write Operations”). Thus, the
`
`datasheet is relevant because it specifies the inherent properties of the Ciarcia
`
`reference, and thus proves the disclosure of the claim term “code data,” as
`
`construed by Patent Owner, in Ciarcia.
`
`Patent Owner argues the datasheet is irrelevant because it was not included
`
`in the institution decision as a basis for invalidity. Patent Owner cites no authority
`
`holding that evidence not included in the institution decision as a basis for
`
`invalidity is categorically inadmissible. Indeed, if that were so, then all of the
`
`evidence Patent Owner has submitted that was not included in the institution
`
`decision as a basis for invalidity would also be inadmissible.
`
`Patent Owner cites Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346
`
`(Fed. Cir. 2009), as allegedly supporting Patent Owner’s arguments. Callaway is
`
`inapposite because that case dealt with incorporation by reference, which is not at
`
`issue here. Whether the datasheet was incorporated by reference into Ciarcia is an
`
`issue that is itself irrelevant. The datasheet is relevant because it proves the
`
`inherent content of Ciarcia. See Fed. R. Evid. 401 (evidence is relevant if it has
`
`any tendency to make a fact more or less probable).
`- 4 -
`{01789916.1}
`
`
`
`IPR2014-01104
`
`V.
`
`Conclusion
`
`U.S. Patent No. 5,414,761
`
`Petitioner respectfully requests Patent Owner’s motion be entirely denied.
`
`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
`
`{01789916.1}
`
`- 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
`
`{01789916.1}
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