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 REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`
`CERTAIN INADMISSIBLE TESTIMONY OF PATENT OWNER’S
`
`WITNESS ALEX COOK
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on this 5th day of August, 2015.
`
`By: /Jeannie Ngai/
`Jeannie Ngai
`
`{01792115.1}
`
`
`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 REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`
`CERTAIN INADMISSIBLE TESTIMONY OF PATENT OWNER’S
`
`WITNESS ALEX COOK
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on this 5th day of August, 2015.
`
`By: /Jeannie Ngai/
`Jeannie Ngai
`
`{01792115.1}
`
`
`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`Exhibit List
`
`Exhibit 1001: U.S. Patent No. 5,414,761 to Paul V. Darbee.
`
`Exhibit 1002: U.S. Patent No. 5,255,313 to Paul V. Darbee.
`
`Exhibit 1003: U.S. Patent No. 5,228,077 to Paul V. Darbee.
`
`Exhibit 1004: Prosecution history of U.S. Patent Application Serial No.
`08/134,086.
`
`Exhibit 1005: Prosecution history of U.S. Patent Application Serial No.
`08/046,105.
`
`Exhibit 1006: Prosecution history of U.S. Patent Application Serial No.
`07/587,326.
`
`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 1010: R. Karr, D. Sokol & T.J. Schmidt, CORE Serial Interface (CS – 232)
`Manual, Revision 3.0 (1988).
`
`Exhibit 1011: U.S. Patent No. 4,959,810 to Darbee et al.
`
`Exhibit 1012: CORE Reference Manual (1987).
`
`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 1014: Complaint for Patent Infringement, Universal Electronics Inc. v.
`Universal Remote Control, Inc., No. 13-984 (C.D. Cal. June 28,
`2013).
`
`Exhibits 1015–1042: Intentionally omitted.
`
`Exhibit 1043: Intel 8254 Programmable Interval Timer datasheet.
`
`{01792115.1}
`
`
`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`Exhibits 1044–49: Intentionally omitted.
`
`Exhibit 1050: Deposition Transcript of Ramzi Ammari (June 10, 2015).
`
`Exhibit 1051: Deposition Transcript of Ramzi Ammari (June 11, 2015).
`
`Exhibit 1052: Deposition Transcript of Alex Cook (June 15, 2015).
`
`Exhibit 1053: Deposition Transcript of Alex Cook (June 16, 2015).
`
`Exhibit 1054: Deposition Transcript of Alex Cook (June 17, 2015).
`
`Exhibit 1055: Prosecution history of U.S. Patent Application Serial No. 07/127,999
`
`Exhibit 1056: Complaint for Patent Infringement, Universal Electronics, Inc. v.
`Universal Remote Control Inc., No. 12-00329 (C.D. Cal. March 2,
`2012).
`
`Exhibit 1057: Excerpts from the Deposition Transcript of Jak Hee You (Sept. 12,
`2013) (Refiled).
`
`Exhibit 1058: Order Granting Defendant’s Motion for Attorneys’ Fees, Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 12-329
`(C.D. Cal. Mar. 10, 2015) (Dkt. 475).
`
`Exhibit 1059: Defendant Universal Remote Control, Inc.’s Supplemental
`Submission re: Motion for Attorneys’ Fees, Universal Electronics,
`Inc. v. Universal Remote Control, Inc., No. 12-329 (C.D. Cal. Mar.
`24, 2015) (Dkt. 502).
`
`Exhibit 1060: Declaration of Peter H. Kang in Support of Defendant Universal
`Remote Control, Inc.’s Supplemental Submission re: Motion for
`Attorneys’ Fees, Universal Electronics, Inc. v. Universal Remote
`Control, Inc., No. 12-329 (C.D. Cal. Mar. 24, 2015) (Dkt. 502-2).
`
`Exhibit 1061: U.S. Patent No. 4,623,887A – Welles.
`
`Exhibit 1062: Intentionally omitted.
`
`Exhibit 1063: Declaration of Thomas A. Gafford.
`
`Exhibit 1064: Waddington North Am., Inc. v. Sabert Corp., No. 09-4883, 2011
`U.S. Dist. LEXIS 86632, at *46–*50 (D. N.J. Aug. 5, 2011).
`{01792115.1}
`
`
`
`IPR2014-01104
`
`I.
`
`Introduction
`
`U.S. Patent No. 5,414,761
`
`Patent Owner does not contest that Mr. Cook’s improper testimony on cross-
`
`and redirect examination is unreliable, speculative, and/or lacks foundation. Thus,
`
`Mr. Cook’s improper testimony should be excluded for at least those reasons.
`
`Regarding Mr. Cook’s improper testimony on cross-examination, Patent
`
`Owner contends that Petitioner opened the door. But Petitioner did not—in fact,
`
`Petitioner’s counsel asked yes-or-no questions to which Mr. Cook provided
`
`nonresponsive answers.
`
`Regarding Mr. Cook’s improper redirect testimony, Patent Owner argues
`
`that one of the questions asked by Patent Owner’s counsel was not leading, but the
`
`surrounding context and the answer to the question demonstrate the question was
`
`leading.
`
`II. Mr. Cook’s Cross-Examination Testimony That The Ciarcia Reference
`Lacks The Claimed “Input Means” Should Be Excluded
`
`Petitioner’s primary argument supporting exclusion of Mr. Cook’s testimony
`
`is that the testimony is unreliable (see Paper 30 at 4–5) and thus should be
`
`excluded or at least accorded no weight. Patent Owner ignores this argument,
`
`apparently conceding the point. (See generally, Paper 37).
`
`Patent Owner instead argues Petitioner waived its objection by asking the
`
`question that led to the inadmissible testimony, thus opening the door. (See Paper
`
`{01792115.1}
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`- 1 -
`
`
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`IPR2014-01104
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`U.S. Patent No. 5,414,761
`
`37 at 2 (quoting Ex. 1053 (Cook Dep.) at 418:18–25)). At most, Patent Owner’s
`
`argument supports admission of the answer to the cited question (Ex. 1053 at
`
`419:1–:2), but no more. The remainder of the questions were yes-or-no questions
`
`to which Mr. Cook gave nonresponsive answers. For example, Petitioner requests
`
`exclusion of the following answer:
`
`Q. All right. Ciarcia has buttons for inputting commands into
`the remote control, correct?
`
`A. No. Ciarcia has buttons for selecting menu items.
`
`Ex. 1053 at 419:11–:15. The italicized portion is nonresponsive and, as
`
`Petitioner’s reply seems to concede (see Paper 37 at 3), nonresponsive answers are
`
`inadmissible.
`
`Patent Owner concedes that Petitioner objected, but argues Petitioner’s
`
`objection was insufficient. (Paper 37 at 3–4). Patent Owner cites no authority
`
`defining what constitutes a sufficient objection, other than 37 C.F.R. § 42.53(f)(8),
`
`which only requires that an objection be made “on the record during the deposition
`
`and preserved in a timely filed motion to exclude.” Here, the objection was clearly
`
`made on the record during the deposition (see Ex. 1053 at 423:1–:4) and preserved
`
`in this timely filed motion to exclude.
`
`The Patent Office Trial Practice Guide clarifies that “an objection must be
`
`stated concisely” and “[o]bjections should be limited to a single word or term.” 77
`
`{01792115.1}
`
`- 2 -
`
`
`
`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`Fed. Reg. 48772. The Guide also provides that “[a]n objecting party must give a
`
`clear and concise explanation of an objection if requested by the party taking the
`
`testimony . . . .” Id. Thus, objections must be concise and, if there is any
`
`ambiguity, the onus is on the non-objecting party to request further clarity or
`
`explanation. Here, after hearing Petitioner’s objection, Patent Owner did not
`
`protest that there was any ambiguity, did not request any additional explanation,
`
`and did not contend the objection was insufficient. (See Ex. 1053 at 423:5–:6).
`
`Finally, even assuming Petitioner’s objection was insufficient—which it was
`
`not—Patent Owner has identified no prejudice from the alleged insufficiency.
`
`Thus, Patent Owner’s complaints ring hollow and should be disregarded.
`
`III. Mr. Cook’s Redirect Testimony Regarding His Erroneous Claim
`Construction Date Should Be Excluded
`
`Patent Owner argues that Petitioner did not “identify a single, specific
`
`question that Petitioner believes was leading,” (Paper 37 at 4) but omits that
`
`Petitioner identified a specific series of leading questions. (See Paper 30 at 6–7
`
`(quoting Ex. 1054 at 741:21–751:3)).
`
`Patent Owner alleges that Petitioner’s “Analysis” section is short (Paper 37
`
`at 4), but omits that Petitioner provided detailed “Legal Authority” and
`
`“Background” sections that provided most of the necessary information. (See
`
`Paper 30 at 6–8 and 2–3).
`
`{01792115.1}
`
`- 3 -
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`
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`IPR2014-01104
`
`U.S. Patent No. 5,414,761
`
`Patent Owner incorrectly argues that Petitioner did not “cite any legal
`
`authority for what constitutes a leading question.” (Paper 37 at 4). Petitioner cited
`
`Waddington North Am., Inc. v. Sabert Corp., No. 09-4883, 2011 U.S. Dist. LEXIS
`
`86632, at *46–*50 (D. N.J. Aug. 5, 2011), which explains at length what
`
`constitutes a leading question.1 (See Paper 30 at 9). Petitioner also cited
`
`SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1209–10 (Fed. Cir. 2013), which
`
`provides examples and explanation of why expert testimony provided in response
`
`to leading questions from friendly counsel is unhelpful. (See Paper 30 at 2).
`
`Patent Owner argues that the question “And do you have an understanding
`
`of what the priority date of the ’313 patent is?” is “clearly” not leading. (Paper 37
`
`at 5). Patent Owner omits the surrounding context, in which Patent Owner’s
`
`questions regarding priority dates and filing dates, while seemingly innocuous
`
`when viewed individually, were steps meant to carefully lead the witness to the
`
`desired testimony at the end of the passage regarding each patent. (See Paper 30 at
`
`7–8). Indeed, the answer given to the question above was a convoluted
`
`explanation of how Mr. Cook “didn’t see anything” that “would have affected it,”
`
`where “it” apparently referred to the claim construction for the term ‘code data.’
`
`1 A copy of this authority is provided as Exhibit 1064 for the convenience of
`the Board. See 37 C.F.R. 42.13(d).
`
`{01792115.1}
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`- 4 -
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`
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`IPR2014-01104
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`U.S. Patent No. 5,414,761
`
`(Ex. 1054 at 746:13–:22). In other words, Mr. Cook did not just provide the
`
`priority date as asked, he provided a lengthy answer that Patent Owner’s counsel
`
`had coached him to give in preceding questions. (See Paper 30 at 7–8). And even
`
`given the preceding coaching for other patents, Patent Owner’s counsel still needed
`
`to repeatedly use leading questions to clarify Mr. Cook’s answer. (See Ex. 1054 at
`
`747:6–:7; 747:18–:20).
`
`Finally, Patent Owner ignores Petitioner’s argument that Mr. Cook’s
`
`testimony is unreliable because it lacks foundation and amounts to speculation.
`
`See Paper 30 at 9. Thus, Patent Owner appears to concede those points and Mr.
`
`Cook’s testimony should be excluded for those reasons or at least accorded no
`
`weight.
`
`IV. Conclusion
`
`Petitioner respectfully requests the Board exclude the identified portions of
`
`Mr. Cook’s testimony.
`
`Date: August 5, 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
`
`{01792115.1}
`
`- 5 -
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`
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`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: August 5, 2015
`
`/ Jeannie Ngai /
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`7th Floor
`New York, NY 10036
`
`{01792115.1}
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