IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Universal Remote Control, Inc.
`
` v.
`
`Universal Electronics, Inc.
`
`Case No. IPR2014-01104
`
`Trial Paralegal: Cathy Underwood
`
`
`
`In re Patent of: Darbee
`
`Patent No.: 5,414,761
`
`Filed: Oct. 8, 1993
`
`Issued: May 9, 1995
`
`Assignee: Universal Electronics Inc.
`
`Title: REMOTE CONTROL SYSTEM
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on this 24th day of June, 2015
`
`
`
`
` By: /Jeannie Ngai/
`Jeannie Ngai
`
`{01772605.1}
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`
`I.
`
`II.
`
`Patent Owner’s Expert Testimony Is So Unreliable due to
`Fundamental Underlying Legal Errors Such That Patent Owner’s
`Response Is Rendered Baseless. ...................................................................... 1
`Patent Owner’s Claim Construction Is Legally Erroneous Because It
`Renders Terms Superfluous, Reads Limitations from the
`Specification into the Claim, and Ignores the Express Teachings of
`the Specification. ............................................................................................. 3
`A.
`"Code Data" ........................................................................................... 3
`1.
`Properly construed, “code data” refers to data, such as
`timing information, that are used for generating infrared
`codes .............................................................................................. 5
`“Code data” do not require “instructions” since the ‘761
`patent systematically distinguishes “instructions” from
`“code data” .................................................................................... 7
`Even assuming, for the sake of argument, that the “list of
`instructions” created in the preferred method of learning
`infrared codes is considered “code data,” nothing in the
`‘761 patent or its file history limits the term “code data”
`such that “instructions” are always required in addition to
`the timing information of the infrared code .................................. 8
`Patent Owner Does Not Distinguish the Prior Art Based on Any
`Other Claim Constructions Patent Owner Proposed for the
`Means-Plus-Function Limitations. ...................................................... 10
`No Further Means Plus Function Limitations Should Be
`Construed. ............................................................................................ 11
`III. Claims 1, 9, 10, 14, 15, 16 and 17 are Invalid as Obvious Over
`Ciarcia in View of Hastreiter Under 35 U.S.C. § 103(a) .............................. 12
`A.
`Ciarcia Discloses the Claimed “Code Data for Creating
`Appropriate IR Lamp Driver Instructions for Causing said
`Infrared Signal Output Means to Emit Infrared Signals” ................... 12
`1.
`There is no dispute that Ciarcia discloses the properly
`construed “code data” ................................................................. 13
`
`2.
`
`3.
`
`B.
`
`C.
`
`
`
`
`- i -
`
`

`
`
`
`B.
`
`2.
`
`3.
`
`Even Under Patent Owner’s Erroneous Construction,
`Ciarcia Teaches Storing and Using “Instructions” to
`Skilled Artisans ........................................................................... 13
`Even if EPROM were excluded from the “memory
`means,” Ciarcia discloses to skilled artisans supplying
`and storing instructions in a RAM .............................................. 15
`The Combination of Ciarcia with Hastreiter Was Obvious to
`Persons of Ordinary Skill at the Relevant Time Period ...................... 16
`IV. Patent Owner Presents No Relevant Evidence Of Commercial
`Success ........................................................................................................... 20
`Petitioner has named the real party in interest ............................................... 23
`V.
`VI. Conclusion ..................................................................................................... 25
`
`
`
`
`
`- ii -
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`

`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Cole v. Kimberly-Clark Corp.,
`102 F.3d 524 (Fed. Cir. 1996) ............................................................................ 12
`
`Graham v. John Deere Co. of Kan. City,
`383 U.S. 1 (1966) ............................................................................................ 2, 17
`
`Iron Grip Barbell Co. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) .......................................................................... 21
`
`Kopykake Enters. v. Lucks Co.,
`264 F.3d 1377 (Fed. Cir. 2001) ............................................................................ 2
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ........................................................................................ 2, 17
`
`Markman v. Westview Instruments,
`52 F.3d 967 (Fed. Cir. 1995) (en banc) ................................................................ 6
`
`Minks v. Polaris Indus.,
`546 F.3d 1364 (Fed. Cir. 2008) ............................................................................ 2
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................... 1, 4, 8
`
`Rodime PLC v. Seagate Tech., Inc.,
`174 F.3d 1294 (Fed. Cir. 1999) .......................................................................... 12
`
`Vitronics Corp. v. Conceptronic,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 10
`
`Statutes
`
`35 U.S.C. § 103(a) ................................................................................................... 12
`
`
`
`
`- iii -
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`

`
`
`
`
`
`
`
`EXHIBIT LIST
`
`Exhibit 1001: U.S. Patent No. 5,414,761 to Paul V. Darbee
`
`Exhibit 1002: Prosecution history of U.S. Patent Application Serial No.
`
`08/134,086
`
`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 1011: U.S. Patent No. 4,959,810 to Darbee et al.
`
`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 1050: Deposition Transcript of - 6.15.15
`
`Exhibit 1051: Deposition Transcript of Ramzi Ammari - 6.10.15
`
`Exhibit 1052: Deposition Transcript of Ramzi Ammari - 6.11.15
`
`Exhibit 1053: Deposition Transcript of Alex Cook - 6.16.15
`
`Exhibit 1054: Deposition Transcript of Alex Cook - 6.17.15
`
`Exhibit 1055: Prosecution history of U.S. Patent Application Serial No.
`
`07/127,999
`
`
`
`
`- i -
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`

`
`Exhibit 1056: Complaint for Patent Infringement in Universal Electronics, Inc. v.
`
`Universal Remote Control Inc., Civil Action No. SACV 12-00329, filed March 2,
`
`2012
`
`Exhibit 1057: Exhibit A to URC’s Opposition to Motion in Limine #5
`
`Exhibit 1058: Order Granting URC’s Motion for Attorneys’ Fees
`
`Exhibit 1059: Defendant Universal Remote Control, Inc.’s Supplemental
`
`Submission re: Motion for Attorneys’ Fees
`
`Exhibit 1060: Declaration of Peter H. Kang in Support of Defendant Universal
`
`Remote Control, Inc.’s Supplemental Submission re: Motion for Attorneys’ Fees
`
`Exhibit 1061: U.S. Patent No. 4,623,887A – Welles
`
`Exhibit 1063: Declaration of Thomas A. Gafford
`
`{01772605.1}
`
`
`- ii -
`
`

`
`
`
`The following is the Petitioner’s Reply to the Patent Owner’s Response
`
`(POR) filed April 1, 2015 (Papers 14 and 16). For at least the reasons set forth
`
`below, and consistent with the decision of the Board (Board’s Decision) instituting
`
`Inter Partes review (see Paper 9, January 6, 2015), Claims 1, 9, 10, and 14-17 of
`
`U.S. Patent No. 5,414,761 (“the '761 patent") are invalid.
`
`I.
`
`Patent Owner’s Expert Testimony Is So Unreliable due to Fundamental
`Underlying Legal Errors Such That Patent Owner’s Response Is
`Rendered Baseless.
`
`In its Response, Patent Owner relied on the declaration of a technical expert,
`
`Alex Cook, which is Patent Owner’s only technical evidence supporting validity.
`
`See Ex. 2029. Mr. Cook’s analysis, however, is infected with several legal errors
`
`that render his opinions fundamentally flawed, unreliable, and unhelpful.
`
`First, Mr. Cook’s construction of the term “code data” relies on several legal
`
`errors, discussed in more detail below. In summary, Mr. Cook reads into the term
`
`“code data” not just data, but also “instructions” from a specific paragraph of the
`
`specification, despite the fact that “instructions” are separately claimed and that the
`
`specification teaches that “code data” and “instructions” are separate limitations.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1323-25 (Fed. Cir. 2005) (en banc).
`
`Absent this improper claim construction, Mr. Cook (and Patent Owner) lack any
`
`basis to distinguish the Ciarcia reference and thus the Board should find the ‘761
`
`patent claims invalid on this basis alone.
`
`
`
`
`1
`
`

`
`
`
`Second, Mr. Cook construed the claims as of the filing date of the
`
`application. See Ex. 2029 at ¶ 20 and Ex. 2053 (Cook Dep.) at 293:1–:8. In
`
`actuality, claims are construed as of the priority date for each application.
`
`Kopykake Enters. v. Lucks Co., 264 F.3d 1377, 1383 (Fed. Cir. 2001).
`
`Third, Mr. Cook’s analysis of means plus function limitations wrongly states
`
`that means plus function claim terms are “limited to the structures identified in the
`
`specification of the patent required to necessarily perform the claimed function.”
`
`See Ex. 2029 at ¶ 24. In actuality, means plus function claims terms include
`
`equivalents to structures identified in the specification. Minks v. Polaris Indus.,
`
`546 F.3d 1364, 1378 (Fed. Cir. 2008).
`
`Finally, Mr. Cook’s obviousness analysis does not take into account the
`
`differences between the prior art and the claim as required by the Graham factors.
`
`See Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 24–26 (1966) (affirming a
`
`determination of obviousness where there were no nonobvious differences between
`
`the prior art and the claims at issue). Mr. Cook also omits any discussion of the
`
`obvious-to-try standard. Instead, Mr. Cook used a standard under which he
`
`deemed it “necessary” to find a teaching, suggestion, motivation to combine
`
`references. Id. at 412:20–:25. Mr. Cook’s approach was explicitly rejected in KSR
`
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). Thus, Patent Owner has no
`
`
`
`
`2
`
`

`
`
`
`evidence to properly rebut the obvious combination of the Ciarcia and Hastreiter
`
`references.
`
`In conclusion, this Court should not rely on Mr. Cook’s unreliable
`
`testimony. As Patent Owner has no reliable evidence supporting validity, this
`
`Court should rule in Petitioner’s favor.
`
`II.
`
`Patent Owner’s Claim Construction Is Legally Erroneous Because It
`Renders Terms Superfluous, Reads Limitations from the Specification
`into the Claim, and Ignores the Express Teachings of the Specification.
`A.
`Patent Owner proposed in its Response for the first time that the term “code
`
`"Code Data"
`
`data” should be construed to require not just “data” but rather to require
`
`“instructions and timing information for generating an infrared signal.” POR at p.
`
`22. (Without pointing to any support, Patent Owner also construes “code data” to
`
`refer to “the transmission scheme and data used to create IR lamp driver
`
`instructions.” POR at p. 24 and Ex. 1053 (Cook Dep.) at 323:1-13. This apparent
`
`confusion over “code data” further demonstrates the legal error in Patent Owner’s
`
`argument. See, e.g., POR at pp. 22-24.)
`
`Patent Owner’s expert Mr. Cook testified that these instructions and timing
`
`information are limited to five specific paragraphs found in the specification. Ex.
`
`1053 (Cook Dep.) 321:3-25. The mere fact that Patent Owner’s expert had to
`
`resort to reading five specific paragraphs from the specification into the claim term
`
`
`
`
`3
`
`

`
`
`
`reveals the weakness of their position. A claim construction which reads
`
`particular portions of the specification into the definition of the claim term is
`
`legally flawed. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en
`
`banc).
`
`Contrary to Patent Owner’s arguments, persons having ordinary skill in the
`
`art understood at the time that the claimed “code data” do not require such
`
`“instructions” because infrared signals can be generated based on timing
`
`information alone, for example, as taught by the prior art. Ex. 1063 at ¶¶32, 42-
`
`46.
`
`Indeed, Patent Owner’s proposed construction is inconsistent with the
`
`express claim language which recites “instruction codes” as an alternative to “code
`
`data,” the specification which systematically differentiates “instructions” from
`
`“code data,” and the priority document which expressly describes that “code data”
`
`includes “only” timing information. Infra. Patent Owner and Mr. Cook improperly
`
`interpret the claim term such that “instruction codes” is rendered superfluous. See,
`
`e.g., Phillips, 415 F.3d at 1324–25 (interpreting claims so as to avoid redundancy).
`
`The file history further supports that the “instructions” from the preferred
`
`learning method are not required for the “code data” since claims expressly
`
`directed to such “instructions” have been subject to restriction requirements and
`
`
`
`
`4
`
`

`
`
`
`canceled from the parent application for the U.S. Patent No. 4,959,810 (“the ‘810
`
`parent patent”, Ex. 1011). Infra.
`
`As Patent Owner’s expert, Mr. Cook admitted, this erroneous construction of
`
`“code data” is the only basis used to differentiate the prior art. Ex. 1053 (Cook
`
`Dep.) 361:25-362:7. Because the Board should reject this legally erroneous claim
`
`construction, claims 1, 9, 10, and 14-17 of the '761 patent are invalid.
`
`1.
`
`Properly construed, “code data” refers to data, such as
`timing information, that are used for generating infrared
`codes
`
`By the literal terms of the claims, “code data” are used for creating
`
`appropriate infrared (IR) lamp driver instructions to emit infrared signals to
`
`controlled devices. Ex. 1001 at claims 1, 14-17. Timing requirements for such
`
`infrared codes were well known at the time. Ex. 1063 at ¶¶ 32 & 45-46. Indeed,
`
`the ‘761 patent relies on an illustration of such infrared codes and corresponding
`
`modulation schemes from prior art U.S. Patent No. 4,623,887 to Welles (Ex.
`
`1061). Id. at 10:11-33 and FIG. 11. The specification further explains that “code
`
`data for the infrared codes” was also known in the prior art because such code data
`
`“may be obtained from vendor information sheets and specifications, can be
`
`determined using the methods disclosed in U.S. Pat. Nos. 4,623,887 [to Welles]
`
`and 4,626,848, or by the method disclosed herein.” Id. at 10:40-44. Thus, skilled
`
`artisans are expressly taught by the ‘761 specification that the term “code data”
`
`
`
`
`5
`
`

`
`
`
`was known well before the ‘761 patent. Ex. 1063 at ¶¶ 32 & 45-46. Patent Owner
`
`and Mr. Cook improperly ignore these relevant teachings of the specification.
`
`Markman v. Westview Instruments, 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc).
`
`Further, the fact that some ‘761 paragraphs teach “code data” (or
`
`information) and other paragraphs teach “instructions” does not mean that the
`
`specification is teaching these are one and the same. Indeed, the ‘761 patent’s
`
`priority document expressly teaches that only the timing information is part of the
`
`claimed “code data.” The ‘810 parent patent (Ex. 1011) at 1:57-66 (“In learning
`
`the infrared code and transforming same to code data …, a novel method is
`
`utilized wherein … only the time duration of the pulses … as well as the time
`
`duration of the pause between bursts are sensed and used to learn and later to
`
`generate the infrared codes.”) (emphases added).
`
`Accordingly, “code data” refers in general to data, such as timing
`
`information, that are used for generating infrared codes. Id. As neither Patent
`
`Owner nor Mr. Cook have presented any basis for distinguishing the Ciarcia
`
`reference from “code data” as properly construed, the ‘761 patent is invalid.
`
`
`
`
`6
`
`

`
`
`
`2.
`
`“Code data” do not require “instructions” since the ‘761
`patent systematically distinguishes “instructions” from
`“code data”
`
`(i) The language of the claims expressly differentiates “code data” from
`
`“instruction codes” and describes “code data” as alternative to “instruction codes.”
`
`For example, claim 1 recites:
`
`“at least one of (a) instruction codes or (b) code data for creating
`appropriate IR lamp driver instructions.”
`
`‘761 patent (Ex. 1001) at 22: 60-62 (emphasis added).
`
`Thus, allowing “code data” to inherently always include “instructions” as
`
`Patent Owner suggests would effectively rewrite the claim language to remove the
`
`“at least one of … or” language. Indeed, “instruction codes” require
`
`“instructions.” The claim merely requires these “instruction codes” as “one of”
`
`two options, but under the Patent Owner’s construction “instructions” would be
`
`required all the time, thus removing the “optional” language of the claim. The
`
`Patent Owner is not allowed to rewrite the claim.
`
`(ii) The specification, just like the claim language, differentiates “code data”
`
`from “instructions.” See ‘761 patent (Ex. 1001) at 9:35-39 and 9:17-21 (“the code
`
`data [for the infrared code] and instructions for generating such codes” and
`
`updating “the code data and/or instructions”). See also 9:49-53. As Mr. Cook
`
`admitted, his proposed construction would render the term “instructions”
`
`
`
`
`7
`
`

`
`
`
`superfluous. Ex. 1053 (Cook Dep.) 329:18-330:3. Thus, requiring “instructions”
`
`for the “code data” would be inconsistent with the meaning and scope of the term
`
`“code data” as it is used in the specification. Phillips v. AWH, 415 F.3d 1303,
`
`1315.
`
` (iii) The ‘810 parent patent, to which the ‘761 patent claims priority,
`
`expressly describes that “code data” includes only timing data, such as duration of
`
`bursts and pauses in between, without referencing any “instructions.” See ‘810
`
`parent patent (Ex. 1011) at 1:57-66 (“In learning the infrared code and
`
`transforming same to code data …, a novel method is utilized wherein … only the
`
`time duration of the pulses in a burst … as well as the time duration of the pause
`
`between bursts are sensed and used.”) (emphases added).
`
`3.
`
`Even assuming, for the sake of argument, that the “list of
`instructions” created in the preferred method of learning
`infrared codes is considered “code data,” nothing in the
`‘761 patent or its file history limits the term “code data”
`such that “instructions” are always required in addition to
`the timing information of the infrared code
`
`(i) The specification expressly refers to “code data” when it describes data
`
`used in the prior art for generating infrared codes and does not limit the term “code
`
`data” to the ‘761 patent’s preferred embodiment. See ‘761 patent (Ex. 1001) at
`
`10:40-44 and 10:11-16 (describing “code data” in the prior art patents and vendor
`
`information sheets); see also FIG. 11 from U.S. Pat. No. 4,623,887 (Ex. 1061).
`
`
`
`
`8
`
`

`
`
`
`Thus, there is no reason to require “code data” to include “instructions” from the
`
`‘761 patent’s preferred embodiment.
`
`(ii) The ‘810 parent patent’s originally filed claim 1 expressly recited the
`
`step of “transforming the recorded point-in-time data into a list of instructions for
`
`generating a replica of the train of pulses” and storing the same. Ex. 1055 (App.
`
`No. 07/127,999) at p. 276. Thus, when the applicants wanted to claim the “list of
`
`instructions” (which Patent Owner now tries to read into “code data”), they did so
`
`expressly by calling them what they are: instructions. That original claim 1 was
`
`subject to restriction requirement and later canceled in an amendment. Id. at P. 55.
`
`The Examiner found that the method “has separate utility,” and is distinct from the
`
`separately usable circuit structure. Id. at Non-Final Rejection of 3/31/1989 at p.
`
`104. This restriction requirement and subsequent cancelation of the corresponding
`
`claim further undermines Patent Owner’s attempt to link the “list of instructions”
`
`to the claimed “code data” of the claims of the ‘761 patent.
`
` (iii) Mr. Cook also points to FIG. 14 as evidence that “instructions” are
`
`needed for the “code data.” Ex. 2029 (Cook Dec.) at ¶¶66-67. In FIG. 14, the “list
`
`of instructions” from the preferred learning method are only used for generating
`
`the carrier signal. See Ex. 1001 at p.13 (Step 4 in FIG. 14: Execute Carrier
`
`Generator Code Loop), and Ex. 1063 at ¶43. But the ‘761 patent also discloses
`
`that some of the infrared codes do not use a carrier frequency at all. Id. at FIG. 11i
`
`
`
`
`9
`
`

`
`
`
`and 10:30-33. Such embodiments do not need a “list of instructions” or any other
`
`type of carrier frequency generation. Ex. 1063 at ¶44. A claim construction that
`
`excludes the preferred embodiment, such as that of FIG. 11i, is rarely, if ever,
`
`correct. Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1583 (Fed. Cir. 1996).
`
`B.
`
`Patent Owner Does Not Distinguish the Prior Art Based on Any
`Other Claim Constructions Patent Owner Proposed for the
`Means-Plus-Function Limitations.
`
`As Mr. Cook admitted, the new construction of “code data” is the only basis
`
`used to differentiate the prior art. Ex. 1053 (Cook Dep.) 361:25-362:7. For the
`
`“data coupling means”, “data coupling means for periodically coupling”, “input
`
`means,” “infrared signal output means,” and “coupling means” recited in the
`
`claims, Patent Owner repeated arguments from its preliminary response that those
`
`“means” should be construed broader than the constructions proposed by Petitioner
`
`and only added references to the declaration of Alex Cook. POR at pp. 3-22.
`
`Patent Owner and Mr. Cook, however, do not rely on any of these claim
`
`constructions to distinguish the claim from the prior art. See, e.g., Ex. 1053
`
`(Cook Dep.) at 466:2-467:2; 467:9-17; 468:19-25; 476:5-14; 479:13-20; and
`
`480:4-11. Because Patent Owner does not dispute, and the Board has already
`
`found that the structures Petitioner has identified in the prior art are the same or
`
`equivalent to those disclosed in the ‘761 patent under either Petitioner’s or Patent
`
`Owner’s interpretation, these constructions should be rejected as moot for the
`
`
`
`
`10
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`

`
`
`
`purposes of this proceeding. Board’s Decision at 6-9. (Although the Board has
`
`found that no software is required by the “data coupling means” of claims 1 and
`
`14-17, Petitioner maintains that this limitation is indefinite as set forth in the
`
`Petition and Mr. Bristow’s declaration. Paper 1 (Petition for Interparties Review)
`
`at p. 16-19 and Ex. 1013 (Bristow Dec) at ¶¶35, 38. Given, however, that the
`
`Board found and Patent Owner does not dispute that the prior art discloses the
`
`requisite structure, this issue doesn’t need to be resolved this time.)
`
`Further, given the unreliability of Mr. Cook’s legal approach to construction
`
`of means plus function limitations, Patent Owner’s claim constructions should be
`
`rejected as fundamentally flawed. Supra.
`
`C. No Further Means Plus Function Limitations Should Be
`Construed.
`
`Patent Owner also argued, for the first time, that Petitioner has not proposed
`
`constructions for “IR lamp driver means”, “receiving means”, “decoding means”,
`
`“first connector means”, and “interface connector means.” POR at 2-3. These new
`
`arguments are simply baseless. Patent Owner admitted that these “means” are part
`
`of means plus function limitations which Petitioner did construe. Id. As Mr.
`
`Bristow has explained, the ‘761 patent and Ciarcia build on the standard features of
`
`the RS-232 ports and voltage level shifting circuitry. Ex. 1013 (Bristow Dec.) at
`
`¶81. Thus the elements in Ciarcia’s circuit are equivalent to those shown in FIGS.
`
`21 and 22 of the ‘761 patent. Id. Patent Owner also failed to show that these are
`
`
`
`
`11
`
`

`
`
`
`means plus function limitations which require a 112(6) analysis. See Rodime PLC
`
`v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999) (explaining that the
`
`word ‘means’ without function does not invoke § 112, P 6.”) and Cole v. Kimberly-
`
`Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (where a claim recites sufficient
`
`structure, it is not in means-plus-function format). Indeed, Patent Owner did not
`
`argue that “memory means” is a means plus function limitation and in fact argued
`
`that “decoding means” is not and it does not require construction. POR at 21-22.
`
`Patent Owner also failed to address the relevance of any of those “means”,
`
`and has not disputed that the structures Petitioner has identified in the prior art are
`
`the same or equivalent to those disclosed in the ‘761 patent. POR at 24-30.
`
`III. Claims 1, 9, 10, 14, 15, 16 and 17 are Invalid as Obvious Over Ciarcia in
`View of Hastreiter Under 35 U.S.C. § 103(a)
`A. Ciarcia Discloses the Claimed “Code Data for Creating
`Appropriate IR Lamp Driver Instructions for Causing said
`Infrared Signal Output Means to Emit Infrared Signals”
`
`Patent Owner’s only basis to try to differentiate the ‘761 patent from the
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`Ciarcia reference (Ex. 1009) is the erroneous construction of “code data.” POR at
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`26-28. Both under the proper construction and Patent Owner’s erroneous
`
`construction, however, the Ciarcia reference discloses “code data” to skilled
`
`artisans.
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`
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`12
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`

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`
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`1.
`
`There is no dispute that Ciarcia discloses the properly
`construed “code data”
`
`Patent Owner argues that Ciarcia fails to disclose “code data” only because
`
`it lacks “code data” which must include “instructions.” Ex. 1053 (Cook Dep.)
`
`361:25-362:7. Patent Owner and Mr. Cook do not dispute that Ciarcia discloses
`
`downloading and storing timing information for generating infrared signals. In
`
`other words, under the proper construction of “code data,” Patent Owner admits
`
`invalidity because even Patent Owner’s expert was forced to admit that Ciarcia
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`teaches the use of “timing information” and hence “code data.” Ex. 1053 (Cook
`
`Dep.) 357:11-358:13. See also Ex. 1063 at ¶48.
`
`2.
`
`Even Under Patent Owner’s Erroneous Construction,
`Ciarcia Teaches Storing and Using “Instructions” to Skilled
`Artisans
`
`Patent Owner and Mr. Cook argue that the claimed “code data” requires
`
`storing not just data, but also “instructions”, and Ciarcia does not store or use any
`
`such instructions. See POR at p. 27 and Ex. 2029 (Cook Dec.) at ¶¶68-75. Patent
`
`Owner’s expert Mr. Cook, however, admitted that Ciarcia’s Master Controller
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`stores such “instructions” for generating IR signals in an EPROM. Ex. 1053 (Cook
`
`Dep.) 367:2-10.
`
`Without any justification, Patent Owner and Mr. Cook try to distinguish
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`Ciarcia’s EPROM from the claimed “memory means.” Cook Dec. at ¶72. Such a
`
`narrow construction of “memory means” is incorrect and has no support at all.
`
`
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`13
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`

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`
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`The plain and ordinary meaning of “memory means” refers to one or more memory
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`devices without limiting the number or type of those devices. Ex. 1063 at ¶27.
`
`Mr. Cook also admitted that EPROMs were known and the claim does not exclude
`
`to have such EPROMs in addition to the RAM. Ex. 1053 (Cook Dep.) at 353:9-21
`
`and 354:4-7. Indeed, dependent claim 10 requires only that the memory means
`
`“includes” non-volatile, read-write memory, but does not exclude other type of
`
`memories. Also, the ‘810 parent patent excluded ROM by expressly claiming “no
`
`ROM.” See Ex. 1011, e.g., at claim 1.
`
`Mr. Cook further argues that the claim requires “downloading
`
`programming” into the “memory means” as an additional function. Ex. 2029 at
`
`¶72 and Ex. 1053 (Cook Dep.) at 343:12-344:2. The fatal flaw in this argument is
`
`that no such “downloading” is required by the claim. For support, Mr. Cook points
`
`to the function of the “data coupling means” limitations, but under Patent Owner’s
`
`proposed construction the structure for those “data coupling means” limitations is
`
`simply “a terminal of a receiving port coupled to [an input port of] the CPU.” POR
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`at 10 and 14, 26. There is no dispute that Ciarcia discloses such a receiving port,
`
`the very structure argued by Patent Owner. Ex. 1053 (Cook Dep.) at 486:4-5 (“It
`
`is true that Ciarcia has a serial port”).
`
`
`
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`14
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`

`
`
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`3.
`
`Even if EPROM were excluded from the “memory means,”
`Ciarcia discloses to skilled artisans supplying and storing
`instructions in a RAM
`
`Patent Owner and Mr. Cook ignore the complete teachings of Ciarcia, which
`
`in addition to the EPROM, discloses a static RAM (just like that in the ‘761
`
`patent). Ciarcia also discloses that an Intel “8254 programmable interval timer”
`
`(“PIT”) is programmed to generate the IR signals, and the corresponding “times
`
`are stored in external data RAM.” Ex. 1009 (Ciarcia) at 118-119. A person of
`
`ordinary skill would know from the literal terms of Ciarcia that a “programmable”
`
`device like Ciarcia’s PIT needs “instructions” to program them. Ex. 1063 at ¶¶49-
`
`50. Ciarcia discloses to skilled artisans that instructions for a PIT can be stored in
`
`the static RAM. Ex. 1063 at 29.
`
`When confronted with the data sheet for the 8254 PIT of Ciarcia, Mr. Cook
`
`argued incredibly that the “instructions” literally disclosed in the data sheet were
`
`somehow not “instructions” within his every-shifting meaning of the term “code
`
`data”. Ex. 1053 (Cook Dep.) at 376:24-377:7. He argued without support that the
`
`claim requires “computer instructions.” Id. Mr. Cook’s argument is merely a bald
`
`contradiction of the literal disclosure of Ciarcia and the literal words of the Intel
`
`8254 datasheet. Thus, to the extent Mr. Cook tried to differentiate “computer
`
`instructions” from “instructions” for a PIT, see Ex. 2029 (Cook Dec.) at ¶72, such
`
`a distinction lacks any support in the ‘761 patent.
`
`
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`15
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`

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`
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`Furthermore, Ciarcia discloses that the “menus and IR signals are stored in a
`
`single 32K-Byte battery backed static RAM.” Ex. 1009 (Ciarcia) at 114. As it was
`
`well known in the art, menu operations themselves require instructions for
`
`displaying and retrieving hierarchically organized information for generating IR
`
`signals. Ex. 1063 at ¶51. Skilled artisans also knew that those instructions can be
`
`stored in the RAM. Ex. 1063 at ¶29. Nowhere does Ciarcia limits its “menu” to
`
`“menu data” as Patent Owner and Mr. Cook assert.
`
`Finally, Patent Owner and Mr. Cook fail to identify any reasons why storing
`
`“instructions” in a static RAM, or downloading “instructions” to a static RAM of a
`
`remote control would be outside of the knowledge of skilled artisans who,
`
`according to Mr. Cook’s own admissions, were well aware of storing and
`
`downloading “data” into the same device. Ex. 1053 (Cook Dep.) at 357:11-
`
`358:13. Indeed, it was typical, and thus an obvious design choice, for
`
`microprocessor based devices at the time to include both an EPROM or other read-
`
`only memory (ROM) device to store basic system programming and a non-volatile
`
`memory to store upgradable instructions for applications. Ex. 1063 at ¶¶27-29.
`
`B.
`
`The Combination of Ciarcia with Hastreiter Was Obvious to
`Persons of Ordinary Skill at the Relevant Time Period
`
`Patent Owner argued, based on Mr. Cook’s declaration, that skilled artisans
`
`would not have been motivated to combine Ciarcia and Hastreiter. POR at 28-30
`
`and Ex. 2029 (Cook Dec.) at ¶¶76-95. Mr. Cook’s basis for this opinion is legally
`
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`16
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`
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`flawed and ignores not just Petioner’s but his own claim construction, and the
`
`teachings of both references to one of ordinary skill.
`
`Mr. Cook has not compared the claim (under any construction) to Ciarcia
`
`(Ex. 1009), Hastreiter (Ex. 1008), or the combination of Ciarcia and Hastreiter, as
`
`required by the Graham factors. Ex. 1053 (Cook Dep.) at 466:2-467:2; 467:9-17;
`
`468:19-25; 476:5-14; 479:13-20; and 480:4-11. See Graham v. John Deere Co. of
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`Kan. City, 383 U.S. 1, 24–26 (1966). Thus, Mr. Cook failed to take into account
`
`that Patent Owner’s construction of “input means” requires only “keys or push
`
`buttons” which are disclosed by Ciarcia, and thus there would be no need to
`
`combine it with Hastreiter’s k