`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`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
`
`
`THE PARTIES’ JOINT SUBMISSION IN RESPONSE TO THE BOARD’S
`ORDER CONCERNING THE CONDUCT OF THE PROCEEDINGS
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on
`August 26, 2015.
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`/s/ Robbie R. Harmer
`Robbie R. Harmer
`
`
`
`
`
`
`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`THE PARTIES’ JOINT SUBMISSION IN RESPONSE TO THE BOARD’S
`ORDER CONCERNING THE CONDUCT OF THE PROCEEDINGS
`
`Universal Electronics Inc. (“UEI” or “Patent Owner”) and Universal Remote
`
`Control, Inc. (“URC” or “Petitioner”) respectfully submit this response to the
`
`Board’s Order Concerning the Conduct of the Proceedings (Paper No. 42). In that
`
`Order, the Board instructed the parties to submit a joint paper explaining which, if
`
`any, previously sealed documents no longer need to be sealed.
`
`UEI has removed redactions that concern the real party in interest in the
`
`public version of the Patent Owner Response (Paper No. 16). The 2004 settlement
`
`agreement between UEI and URC/Ohsung (Exhibit 2050) is not confidential and is
`
`being resubmitted without any confidentiality restrictions. UEI has also removed
`
`several redactions concerning secondary considerations of non-obviousness from
`
`public versions of the Patent Owner Response (Paper No. 16) and the Ramzi
`
`Ammari Declaration (Exhibit 2064).
`
`URC has likewise removed a portion of the redactions included in the
`
`Petitioner’s Reply (Paper No. 20) that concern secondary considerations of non-
`
`obviousness. Only allegedly confidential information of UEI and/or third parties
`
`remains subject to the parties’ motions to file under seal. Thus, URC gave UEI the
`
`option of choosing what it would like to keep redacted in URC's Reply brief.
`
`The three documents referenced above for which the parties have
`
`endeavored to reduce redactions are being filed herewith. The parties are available
`
`1
`
`
`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`for a telephone conference with the Board if the Board has any questions or
`
`concerns regarding the revisions to the parties’ redactions.
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`Universal Remote Control, Inc.
`
`/Douglas A. Miro/
`
`Douglas A. Miro, Reg. No. 31,643
`OSTROLENK FABER LLP
`1180 Avenue of the Americas
`7th Floor
`New York, NY 10036
`(212) 382-0700
`
`
`
`
`
`2
`
`
`
`
`
`
`
`Date: August 26, 2015
`
`Universal Electronics, Inc.
`
`
`
`
`
` /Eric J. Maiers/
`
`
`
`Eric J. Maiers, Reg. No. 59,614
`James J. Lukas, Reg. No. 59,114
`Matthew J. Levinstein, Pro Hac Vice
`Rob R. Harmer, Reg. No. 68,048
`GREENBERG TRAURIG, LLP
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`(312) 456-8400
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