IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Applicant:
`
`Darbee et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01103
`
`v.
`
`Filing Date: September 29, 1994
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,552,917
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`REMOTE CONTROL Attorney Doc.: 059489.144000
`
`Applicant:
`
`Darbee
`
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01106
`
`v.
`
`Filing Date: April 8, 1993
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,255,313
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`UNIVERSAL
`REMOTE CONTROL
`SYSTEM
`
`Attorney Doc.: 059489.144100
`
`Applicant:
`
`Darbee et al.
`
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01102
`
`v.
`
`Filing Date: September 24, 1990
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,228,077
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`REMOTELY
`UPGRADABLE
`UNIVERSAL
`REMOTE CONTROL
`
`Attorney Doc.: 059489.144200
`
`
`
`Universal Electronics Exhibit 2064, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Applicant:
`
`Darbee et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01103
`
`v.
`
`Filing Date: September 29, 1994
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,552,917
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`REMOTE CONTROL Attorney Doc.: 059489.144000
`
`Applicant:
`
`Darbee
`
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01106
`
`v.
`
`Filing Date: April 8, 1993
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,255,313
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`UNIVERSAL
`REMOTE CONTROL
`SYSTEM
`
`Attorney Doc.: 059489.144100
`
`Applicant:
`
`Darbee et al.
`
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01102
`
`v.
`
`Filing Date: September 24, 1990
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,228,077
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`REMOTELY
`UPGRADABLE
`UNIVERSAL
`REMOTE CONTROL
`
`Attorney Doc.: 059489.144200
`
`
`
`Universal Electronics Exhibit 2064, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`Applicant:
`
`Darbee
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01104
`
`v.
`
`Filing Date: October 8, 1993
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,414,761
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`REMOTE CONTROL
`SYSTEM
`
`Attorney Doc.: 059489.144300
`
`
`
`DECLARATION OF RAMZI S. AMMARI
`
`
`I, Ramzi S. Ammari, hereby declare as follows:
`
`I.
`
`Background And Qualifications
`
`1.
`
`I am employed by Patent Owner Universal Electronics, Inc. (“UEI”).
`
`My current position is Senior Vice President, Corporate Planning and Strategy.
`
`2.
`
`I have personal knowledge of the facts discussed herein and/or have
`
`recently gained such knowledge from information transmitted by a person(s) with
`
`knowledge and/or my review of the records maintained by UEI in the course of
`
`regularly conducted business activity, and, if called to testify, I would and could
`
`competently testify to those facts on behalf of UEI.
`
`3.
`
`I earned a Bachelor of Science degree in Engineering from the
`
`University of California, Irvine in 1989 and a Master of Business Administration
`
`(MBA) also from the University of California, Irvine in 1993.
`
`2
`
`Universal Electronics Exhibit 2064, Page 2
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`4.
`
`I joined UEI in July 1997. Prior to being employed by UEI, I served
`
`as Business Planning Manager at Mitsubishi Consumer Electronics of America. I
`
`am currently responsible for all aspects of product development at UEI’s corporate
`
`headquarters located in Santa Ana, California.
`
`5.
`
`I have been asked in this matter by UEI to provide background
`
`information and analysis of U.S. Patent Nos. 5,228,077 (the “‘077 patent”),
`
`5,255,313 (the “‘313 patent”), 5,414,761 (the “‘761 patent”), and 5,552,917 (the
`
`“‘917 patent”) (collectively, the “UEI Patents”) pursuant to the Board’s decision
`
`instituting an inter partes review of Claim 13 of the ‘077 patent, Claims 1, 2, and
`
`20 of the ‘313 patent, Claims 1, 9, 10, and 14-17 of the ‘761 patent, and Claim 1 of
`
`the ‘917 patent (collectively, “Instituted Claims”), and to specifically address
`
`evidence of commercial acquiescence (i.e., recognition and acceptance by
`
`competitors in the industry who have taken licenses to avail themselves of the
`
`merits of the UEI Patents and patents that are related to the UEI Patents) and the
`
`commercial success of the UEI Patents.
`
`6.
`
`The UEI Patents all claim priority to abandoned non-provisional U.S.
`
`Application Serial No. 07/109,336, which was filed on October 14, 1987.
`
`7.
`
`It is my understanding that UEI owns the UEI Patents.
`
`3
`
`
`
`
`
`Universal Electronics Exhibit 2064, Page 3
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`II. The Instituted Claims Of The UEI Patents
`
`8.
`
`The Instituted Claims generally cover apparatuses, systems and
`
`methods for upgrading remote controls in which the remote control is upgraded via
`
`a connection to a computer.
`
`III. Commercial Acquiescence By The Remote Control Industry
`9.
`A large proportion of the remote control industry has taken licenses to
`
`the UEI Patents.
`
`10. Players in the remote control field who have taken licenses to the UEI
`
`Patents include: (1) Logitech Inc., Logitech Europe S.A., Logitech International
`
`
`
`S.A. (collectively, “Logitech”);
`
`
`
`11.
`
` On June 28, 2004, Logitech took a license to the UEI Patents, among
`
`other patents. (See June 28, 2004, Settlement and License Agreement, Exhibit
`
`
`
`
`
`
`
`2031 ¶ 1.5.)
`
`(See id. ¶ 1.6.)
`
`12. On July 12, 2012,
`
` (See July 12, 2012, Settlement and License Agreement,
`
`4
`
`Universal Electronics Exhibit 2064, Page 4
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`Exhibit 2033 ¶ 1.5.)
`
`13. On January 1, 2002,
`
` (See January 1, 2002,
`
`1.5
`
`14. On September 1, 2009,
`
`
`
`, Exhibit 2039 ¶
`
`
`
`
`
`
`
` (See September 1, 2009,
`
`, Exhibit
`
`
`
`,
`
`
`
`
`
`
`
`2040 ¶ 1.4.)
`
`15. On January 1, 2007,
`
` (See January 1, 2007,
`
`Exhibit 2042 ¶ 1.5.)
`
`16. On December 17, 2001,
`
` (See December 17, 2001,
`
`Exhibit 2044 ¶ 1.5
`
`
`
`5
`
`
`
`Universal Electronics Exhibit 2064, Page 5
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`IV. UEI’s Licensing Revenue Is Also Indicative Of The Commercial Success
`Of The UEI Patents
`17. UEI has received the following approximate licensing revenue from
`
`its licensing of the UEI Patents to Logitech,
`
`, since the respective
`
`parties first entered into a license for use of the UEI Patents through 2013:
`
` Logitech:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` (See Royalty Historical Data, Exhibit 2049.)
`
`V. Logitech’s Licensed Sales Of Products Embodying The Instituted
`Claims Of The UEI Patents Enjoyed Commercial Success
`18.
`
`I have personal knowledge of Logitech’s Harmony line of remotes,
`
`and I have used, examined, and configured many of them over the last decade.
`
`19. UEI has licensed Logitech and its Harmony line of remote controls
`
`since at least 2004. (See June 28, 2004 Settlement and License Agreement, Exhibit
`
`2031.)
`
`20.
`
`In July, 2011, UEI filed suit for patent infringement against Logitech,
`
`asserting the UEI Patents, among other patents. Claim charts that were created
`
`during that litigation and prepared by UEI’s counsel describe how Logitech’s
`
`Harmony H300, H650, H700, H900, One, and H1100 remotes (collectively,
`
`6
`
`Universal Electronics Exhibit 2064, Page 6
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`“Logitech Harmony Remotes”) practice the Instituted Claims (with the exception
`
`of Claims 15-17 of the ‘761 patent) and are attached as Exhibit 2032.
`
`21.
`
`I have reviewed the claim charts attached as Exhibit 2032. The claim
`
`charts accurately reflect how the Logitech Harmony Remotes operate. I can
`
`confirm that the excerpts found in the chart appear to be accurate and consistent
`
`with my experience with the Logitech Harmony Remotes.
`
`22. To further confirm my recollection of how the Logitech Harmony
`
`Remotes operate, I also reviewed copies of some of the manuals for Logitech’s
`
`Harmony 650 remote control (Exhibit 2034), Harmony 700 remote control (Exhibit
`
`2035), Harmony 900 remote control (Exhibit 2036), Harmony One remote control
`
`(Exhibit 2037), and Harmony 1100 remote control (Exhibit 2038). These manuals
`
`were obtained from the Logitech website in March, 2015, and bear copyright dates
`
`of 2010, 2010, 2006, 2007, and 2008, respectively.
`
`23. As shown in Exhibits 2034 through 2038, all of these Logitech
`
`Harmony Remotes are upgradeable via a connection to a computer.
`
`24. Generally, when setting up a Logitech Harmony Remote, a user uses
`
`Logitech’s desktop software or an online service to configure downloaded code
`
`data to the remote control.
`
`25. Over the years, Logitech’s Harmony Remotes have typically sold for
`
`around $60 to around $400 per unit.
`
`7
`
`Universal Electronics Exhibit 2064, Page 7
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`26.
`
`It is generally accepted, within our industry, that Logitech has been
`
`the market leader in consumer aftermarket remote controls since approximately
`
`2007. Logitech Harmony Remotes that incorporate the technology of the Instituted
`
`Claims of the UEI Patents have been very successful since they were originally
`
`introduced. For example, from 2007 through the 2014, sales of Logitech remotes
`
`accounted for approximately $100 million in worldwide, annual net sales. (See,
`
`e.g., Excerpts of Logitech Annual Reports 2007 through 2014, at Net Sales by
`
`product family: Remote Controls/Remotes/Digital Home, Exhibit 2041.) During
`
`that period, a considerable portion of Logitech’s remote control sales came from
`
`the same “Harmony” line covered by the two agreements between UEI and
`
`Logitech. (See Exs. 2031 and 2033.)
`
`27. From 2004 to the present, any of Logitech’s sales of Logitech
`
`Harmony Remotes—which embody
`
`the Instituted Claims subject
`
`to
`
`the
`
`aforementioned exception (see Ex. 2032)—took place under a license from UEI
`
`that covered the UEI Patents. (See Exs. 2031 and 2033.)
`
`VI. UEI’s Sales Of Products Embodying The Instituted Claims Of The UEI
`Patents
`
`28. UEI also manufactured a number of commercial products that
`
`incorporate the inventions of the Instituted Claims of the UEI Patents.
`
`29.
`
`I have personal knowledge of UEI’s upgradeable remotes, and I have
`
`used, examined, and configured many of them over the last decade.
`
`8
`
`Universal Electronics Exhibit 2064, Page 8
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`30.
`
`It is generally accepted, within our industry, that UEI has been the
`
`established market leader in original equipment manufacturing of universal remote
`
`controls for cable and satellite television providers. With limited exception, all of
`
`the remote controls UEI has produced for cable and satellite television providers
`
`are commercial embodiments of the Instituted Claims of the UEI Patents.
`
`31. UEI’s upgradeable remotes employing the claimed upgradeability
`
`technology of the Instituted Claims of the UEI Patents have also enjoyed
`
`tremendous commercial worldwide success. For example, from 2000 to 2013 UEI
`
`generated approximately $1.6 billion in gross worldwide sales from its sale of
`
`upgradeable remotes covered by the Instituted Claims to cable television providers.
`
`(See Ex. 2048.)
`
`32. UEI’s Nevo-branded aftermarket consumer remote controls also
`
`employ the inventions of the Instituted Claims of the UEI Patents and were sold
`
`primarily to custom installers. Their user interfaces could be programmed by the
`
`custom installers in many different ways, using a software suite provided by UEI.
`
`UEI ultimately stopped selling its Nevo / Xsight products in 2010, but this was
`
`largely due to competition from other, lower-priced products, including Logitech’s
`
`Harmony Remotes, as well as emerging competition from the smartphone and
`
`tablet space. From their initial release in 2005 through 2010, the Nevo / Xsight
`
`9
`
`Universal Electronics Exhibit 2064, Page 9
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`products realized approximately $17 million in sales. (See Nevo/Xsight Sales
`
`Data, Exhibit 2043.)
`
`VII. Miscellaneous
`
`33.
`
`In signing this declaration, I recognize that the declaration may be
`
`filed as evidence in a contested case before the Patent Trial and Appeal Board of
`
`the United States Patent and Trademark Office. I also recognize that I may be
`
`subject to cross examination in that case and that cross examination will take place
`
`within the United States. If necessary, I will cooperate to the best of my ability to
`
`appear for cross examination within the United States during the time period
`
`allotted for such cross examination to occur.
`
`34.
`
`I declare that all statements made herein of my own knowledge are
`
`true, and that all statements made on information and belief are believed to be true;
`
`and further that these statements were made with the knowledge that willful false
`
`statements and the like are punishable by fine or imprisonment, or both, under
`
`Section 1001 of Title 18 of the United States Code.
`
`10
`
`
`
`
`
`Universal Electronics Exhibit 2064, Page 10
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`Dated: April i, 2015
`
`p
`
`F
`
`'
`
`“N
`
`Universal Electronics Exhibit 2064, Page 11
`Universal Remote Control v. Universal Electronics, Trial No. lPR2014-01104
`
`Universal Electronics Exhibit 2064, Page 11
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
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