Trials@uspto.gov
`571-272-7822
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`Paper No. 47
`Entered: September 8, 2015
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - -
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`UNIVERSAL REMOTE CONTROL, INC.,
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`Petitioner,
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`v.
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`UNIVERSAL ELECTRONICS, INC.,
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`Patent Owner.
`
`- - - - - - -
`
`Case IPR2014-01102 (Patent 5,228,077)
`Case IPR2014-01103 (Patent 5,552,917)
`Case IPR2014-01104 (Patent 5,414,761)
`Case IPR2014-01106 (Patent 5,255,313)
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`- - - - - - -
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`Oral Hearing Held on: Wednesday, August 19, 2015
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`- - - - - - -
`
`Before: HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday, August
`19, 2015, at 9:00 a.m., in Hearing Room A, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
`
`Paper No. 47
`Entered: September 8, 2015
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`UNIVERSAL REMOTE CONTROL, INC.,
`
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`
`Patent Owner.
`
`- - - - - - -
`
`Case IPR2014-01102 (Patent 5,228,077)
`Case IPR2014-01103 (Patent 5,552,917)
`Case IPR2014-01104 (Patent 5,414,761)
`Case IPR2014-01106 (Patent 5,255,313)
`
`- - - - - - -
`
`Oral Hearing Held on: Wednesday, August 19, 2015
`
`- - - - - - -
`
`Before: HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday, August
`19, 2015, at 9:00 a.m., in Hearing Room A, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
`
`PETER H. KANG, ESQ.
`FERENC PAZMANDI, ESQ.
`Sidley Austin LLP
`1001 Page Mill Road
`Building 1
`Palo Alto, California 94304
`650-565-7000
`
`KEITH BARKAUS, ESQ.
`Ostrolenk Faber, LLP
`1180 Avenue of the Americas
`New York, New York 10036
`212-596-0500
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`ON BEHALF OF THE PATENT OWNER:
`
`ERIC J. MAIERS, ESQ.
`JAMES J. LUKAS, JR., ESQ.
`Greenberg Traurig, LLP
`77 West Wacker Drive
`Suite 2500
`Chicago, Illinois 60601
`312-456-840
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`P R O C E E D I N G S
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`
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`(9 : 00 a. m.)
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`JUDGE M EDLEY : Good mo rning, ever ybod y.
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`This is the he aring for IPR2014 -0110 2 , 1103 , 1104 and 1106
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`between Petition er, Universal Re mot e Control, and Patent
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`Owner, Universal Ele ctronics.
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`Per our July 28 th order, each part y will have 60
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`minutes of total t ime to present argu ments for the four
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`proceedings .
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`Petitioner, you will proceed first to present your
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`case with respect to the challenged claims and ground s for
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`which the Board instituted trial for all of the proceedings .
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`And, thereafter , Patent Owner , you will respond to Petition er's
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`presentation to all of the proceedings . Petitioner, you may
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`reserve rebuttal t ime to r espond to Patent Owner 's presentation
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`only.
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`At this t ime we would l ike the parties to please
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`introduce yourselves, beginnin g with the Petitioner.
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`MR. KANG: Good mo rning , Your Honors. My
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`name is Peter Ka ng, with Sidle y Au stin , and we repr esent the
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`Petitioner, Universal Re mote Control .
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`With me is Dr. Ferenc Paz mandi of my law firm;
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`and co -couns el Keith Barkaus of the Ostrolenk law firm.
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`JUDGE M EDLEY : Thank you. And for Patent
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`Owner?
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`MR. MAIERS: Good mo rning, Your Hono rs . On
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`behalf of Patent Owner, Eric Maiers from the law firm of
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`Greenberg Traurig, representin g Univ ersal Electronics.
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`MR. LUKAS: Good morning, Your Honors. James
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`Lukas from Greenberg Traurig rep resenting Universal
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`Electronics.
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`JUDGE M EDLEY : Okay. Thank you. Before we
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`get started, we were made aware of the late filing made by the
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`Patent Owner with i ts de monstratives. Yeste rda y y ou had
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`uploaded some d e monstratives.
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`One was a redact ed version , Exhibit 2071 , and that
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`was sub mitted p rior to our order that went out yesterda y. And
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`then subs equentl y you filed an updated redacted ver sion ,
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`Exhibit 2072 . That was sub mitted late last ni ght after our
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`order went out. And neith er of these filings were t imely.
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`So we would l ike Patent Owner counsel, Mr.
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`Maiers, to please explain why you filed the first redacted and
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`the second redacted versions late and, if we excuse thes e late
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`filings , which demonstratives shoul d stay of r ecord.
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`MR. MAIERS: So Patent Owner t imely filed, as
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`you are a ware, a de monstrative that we requested to be filed
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`under seal on Mo nday of this week.
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`And pursuant to agree ment with counsel for
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`Petitioner, we were going to file a redacted version of that
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`same de monstrat ive, where we redacted the confide ntial
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`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`infor mation from that slid e presentation, Tuesda y morning ,
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`which we did. And then Your Hono rs issued your order
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`expunging the under seal versio n of that docu ment.
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`In respons e to that we con ferred with our cli ent
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`and identified some infor mation that we decided to waive
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`confidentiality on, and so we sub mi tted an upd ated redacted
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`version of those slid es such that more of that infor matio n that
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`we pr eviousl y co nsidered co nfidenti al would be part of the
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`public record.
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`We did not change or add any mat e rial to the slide.
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`It was me rel y just revealing more of the infor mation that was
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`previousl y redacted. And, as a res ult, there would be no
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`prejudi ce to Petit ion er as they had the full versio n of the deck
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`of slid es as of M ond ay, and, frank ly, as of last Wed nesd a y
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`when they were originally served.
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`JUDGE M EDLEY : So if he made what was
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`previousl y redacted available to the public, does that affect
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`your motion to seal? In other word s , if you are agre eing that
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`not ever ything needs to be sealed -- we don't want to seal
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`an ything.
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`MR. MAIERS: C ertainl y.
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`JUDGE M EDLEY : So if we can hone in on what
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`needs to be sealed, that would help us in our ruling.
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`MR. MAIERS: Absolut ely. And that involves a
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`discussi on actually Mr. Lukas and Mr. Kang were just having .
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`What we did is we took our own infor mation that
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`we were willing to waive confidenti ality on and decided to
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`expos e that to the public. But there was some infor matio n that
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`is sub ject to confidentialit y obliga tion s to third -parties ,
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`including Universal Re mote Control , the Petition er here, that
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`we we ren't able to reveal in that s ubs equent filing, Exhibit
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`2072 .
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`Now, there is an issue with respect to some of the
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`infor mation that we initiall y though t was confidential.
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`Universal Remote Control recentl y l earned that that particular
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`exhibi t that we are re ferencing , a l icense agree ment, was
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`sub mitted in open court as a publi c exhibit during a prior
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`l i t igation between the parties.
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`So we believe that any confidenti al there is waived
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`since i t was sub mitted as an exhibit in open court hearings .
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`And I know Mr. Lukas and Mr. Kang were just addr essin g that.
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`That particular i nfor mation is not part of the slides that we
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`sub mitted as Exhib it 2072 . But at a mini mu m we ask Your
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`Honors' per missi on to at least discus s the cont ents of thos e
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`slides.
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`JUDGE M EDLEY : Okay. Sure. Does the
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`Petitioner object to the late filin g of the slid es?
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`MR. KANG: I ' m a l i t t le confused which slides
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`they want to file?
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`JUDGE M EDLEY : My follow -up q uestion was
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`which one, 2071 or 2072 ?
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`MR. MAIERS: 2072 , Your Honor.
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`JUDGE M EDLEY : So we are goin g to expunge
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`2071 from the record. Okay. So 2072 , the ones they filed late
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`last nigh t . . .
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`MR. KANG: So the ones they filed late last night ,
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`I did not have a chance to go throug h them l ine -b y-l ine,
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`page-b y-page , but on the representation that i t has not added
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`any material , si mply re moved mate rial, we would not ob ject .
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`MR. MAIERS: Well, to be clear , we didn't remo ve
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`mate rial. We re moved redactions . So part of what was
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`covered up in 2071 was exposed.
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`MR. KANG: The pagination was d ifferent from the
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`previous version .
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`MR. MAIERS: We re mov ed slides that were
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`redacted in their entiret y so that they wouldn't be show n here.
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`MR. KANG: To the ext ent only things were
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`re moved from the previou s version and nothin g was a dd ed, on
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`that representation we would not ob ject.
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`JUDGE M EDLEY : Okay. So we are goin g to rule
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`to autho rize Patent Owner to proceed with their last file d set
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`of de monstrativ es because i t would be in the interest of
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`justice.
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`So you can rely upon the late filed de monst ratives
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`and we will expung e Exhibi t 2071 from the record in due
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`course.
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`So I' m still concerned with the fact that we have
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`motions to seal. Now i t sounds l ike there might be thing s that
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`don't need to be sealed. Is i t possibl e for the two of you to get
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`together and file an updated motion just telling us exactl y your
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`paper, even a coupl e pages, tellin g us exactl y what you want
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`sealed, what no longer needs to be s ealed, and explain?
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`MR. MAIERS: With respect to the de monst rativ es
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`or the case as a whol e?
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`JUDGE M EDLEY : The case as a whol e because i t
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`sounds l ike certain thing s were made public, availab le to the
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`public during the trial, and t he y don't need to be sealed any
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`more. We don't want to seal an yt hing that doesn't have to be
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`sealed.
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`MR. MAIERS: Und erstood , Your Honor.
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`JUDGE M EDLEY : So is that possible for the two
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`of you to work tog ether?
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`MR. KANG: He first raised that issu e wit h me,
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`l ike, five minutes ago and so I don' t have the t rial r ecord and
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`so we have to go back.
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`JUDGE M EDLEY : We will send out a follo w -up
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`order probabl y to morro w explaining , you know, the deadline
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`and what we exp ect to see. Thank you.
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`MR. KANG: Thank you.
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`MR. MAIERS: Thank you.
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`JUDGE M EDLEY : So, Petition er, you may b egin
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`and you have an hour from this cl ock.
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`MR. KANG: Thank you, Your Hon or. Good
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`morning, Your Hono rs. My name is Peter Kang. I r epresent
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`the Petitioner, Universal Re mote C ont rol, a lso so meti mes
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`refer red to as URC.
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`The funda mental issue in these four consolidated
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`hearing s boils down to one claim c onstruction issue of one
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`term. These four Darbee patents, as we refer to them, are
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`related and they all have si milar clai ms . And all of them have
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`a common cl ai m term or l i mitation called code data.
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`And i t is that claim construction issu e that is the
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`funda mental, central issue in these p roceedings . The issu e is
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`whether that claim term, code data, should be const rued
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`narrowl y as Patent O wner would sugg est to import a l i mitation
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`from the specific ation into that phrase code data, or if the
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`phrase code data should be construed properl y as we believe
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`and not import that l i mitation .
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`It is clear that if the claim is construed narrowl y as
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`Petitioner proposes, there is no disput e from Patent Owner that
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`the pri mar y prior art reference, the so -called Ciarcia refere nce,
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`disclos es code data, and that term code data is the only
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`l i mitation on which the Patent Owner distinguish es the Ciarcia
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`refere nce.
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`JUDGE M EDLEY : So, excuse me, you are sa ying
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`that if we agree with their narro w construction that code data
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`includ es inst ructions, then Ciarci a still meets that l imit ation?
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`MR. KANG: Yes, even under their claim
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`construction of code data, where code dat a also includes
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`instructions , the Ciarcia refe rence , as I will discuss in more
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`detail, does also disclos e not only code data but also
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`instructions and, therefore, under e ither claim construction the
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`Ciarcia refe rence in co mbinatio n with Hastreiter , renders
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`obvious all of the Darbee claims because code data is the only
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`issue on which the prior art is being distinguished.
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`JUDGE M EDLEY : So for purpos es of our o riginal
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`decision , conceivabl y we wouldn't even have to constru e that
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`if we agree that Ciarcia shows even the nar row construction?
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`MR. KANG: Yes, although I will expl ain I think
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`that their construction is legall y i mp roper but, yes, that 's
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`correct.
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`JUDGE M EDLEY : And then there are no other
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`terms that need construing?
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`MR. KANG: Tha t's right . There are second ar y
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`issues in these proceedings , dealing with secondar y
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`consid erations and all that, but the funda mental issu e is
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`whether Ciarcia disclos es code data and what does code data
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`me an.
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`And we believe code data, as I will get to right
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`now, funda ment all y does not mean instructions . It means a
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`type of data used by these re mote c ont rols ulti matel y to
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`generate infrared codes that are sent to a TV or a re ceiver.
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`So let's move directl y to this . So I ' m using
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`Petitioner's Exhi bit 1065 for the record and now I' m on page 2 .
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`Just to expl ain in more detail, the Darbee patents , the four
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`patents at issu e here toda y, are all in a fa mil y of patents that
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`relate through a series of chains of continuations up to a
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`parent application called the '810 patent.
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`And, t herefore , they all share , with respect to code
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`data, especiall y c o mmon specifications , and so the
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`construction of code data doesn't d iffer from p atent to p atent
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`and the parties have treated the phrase code data equall y
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`across all four p a tents.
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`Next slide , let's go to page 4 . So for purposes of
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`the briefing and the expert deposition s and these proceedings ,
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`the parties have generall y treated cl ai m 1 of the '917 patent as
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`representative of all of the Darbee p atent claims at issu e for
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`all four patents.
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`The '917 is a direct continuation of the '810 parent
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`application . The claim term code data appears twice in claim
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`1 of the '917 patent and, as I explain ed, the P atent Owner
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`argues that code data is missing from the Cia rcia pr ior art.
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`Page 5 . So what is code data? In the patent
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`specification for the Darbee patents, we learned that code data
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`is not part of the invention here, not the point of novelt y. The
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`Darbee specification teaches us that code data was known in
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`the prior art.
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`So at column 8 , l ine 58 , the Darbee specificatio n
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`says code data can be obt ained from vendor infor ma tion
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`sheets, specifications, methods disclosed in prior art U. S.
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`Patent Nu mbe r 4 , 623 ,887 , which is the so -called Welles
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`patent, the named inventor, or anoth er prior art patent,
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`4 ,626 ,848 , or by the method disclosed herein.
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`So whateve r code data is, and I can explain this
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`from the figu re, i t is not novel. It is so mething that can be
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`obtained usin g prior art methods.
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`So if we can blow up perhaps the figures from the
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`Darbee specific ation for visibilit y. So on the right side of
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`page 5 of Exhibit 1065 is a copy of figures 11 - A, B, C and so
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`on from the Darbee specification. Code data is analogous to
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`Morse Code. It is the code that is generated such as, if you
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`see in each of the figur es there is a 1 , 0 , 0 , 1 , above the
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`wavefor ms in the various figu res.
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`The code data is the codes, l ike Morse Code, that
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`is sent to the receiver, ulti matel y, on a carrier signal. And i t
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`is e mb edded, the codes are obviousl y e mb edded in the sign al.
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`Figures 11 -A, B, C and so on repres ent different ways of
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`e mbedding or carr ying the code data through variou s di fferent
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`signals, and the wavefor ms are es sentially, when they are high
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`in the envelope, that represents a 1 , and when they are low or
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`in different repr esentations , have di fferent shapes, thos e
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`envelopes help represent the code data.
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`JUDGE B LANKE NS HIP: Is code data shown in
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`these figures?
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`MR. KANG: Yes. Code data would be above each
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`figure the 1 , 0 , 0 .
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`JUDGE B LANKE NS HIP: The 1 's and the 0 's,
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`that' s the code data?
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`MR. KANG: Yes. Next page, plea se.
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`So this is the funda ment al difference bet ween the
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`parties on claim c onstruction of code data. Petitioner b elieves
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`code data should be defined to be data such as t iming
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`infor mation that are used for g enerating infrared codes.
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`Interestingl y, both parties agree that code data
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`includ es t iming infor mation and in both proposed
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`construction s t iming infor mation is not a dispute as to whethe r
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`or not i t is part of code data or a type of code data.
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`The issue is, as you see on the right , P atent
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`Owne r's propos ed construction is that code data also in clud es
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`instructions , instruction s and t iming infor mation. And this is
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`the basis on which Patent Owner distinguishes the Ciarcia
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`refere nce.
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`Let's go to the next p age. Again, as I said in the
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`introduction, the Patent Owner here does not disput e that the
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`prior art Ciarcia reference discloses t iming infor mat ion . As
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`noted, ever ybod y agrees code data i nclud es t iming
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`infor mation.
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`So even in their brief at page 14 the y admit that
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`Ciarcia does perfor m, as they call i t , l i mited t iming anal ysis
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`and provides l i mi ted t iming data. Their expert at deposition,
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`at Exhibit 1053 , starting at page 357 , was asked:
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`So Ciarcia discloses t iming infor mation?
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`Yes.
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`And i t disclos es downlo adin g t iming infor mation?
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`That's right .
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`And i t disclos es downlo adin g that t iming
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`infor mation to a batter y-backed static RAM?
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`That's correct .
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`And so for purposes of this proceeding , if code
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`data is construed , as both parties ag ree, to includ e at l east
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`t iming infor mati on, then Cia rcia dis closes t iming infor mation
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`as ever yone agrees.
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`JUDGE B LANKE NS HIP: Well, in the figure you
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`said that code data was the 1 's and the 0 's.
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`MR. KANG: Yes.
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`JUDGE B LANKE NS HIP: How is that t iming
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`infor mation?
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`MR. KANG: Okay. I can go back and explain that
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`one. So in the sp ecific exa mples in the figures, the 1 's and the
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`0 's would be the actual cont ent of a particular code that 's
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`being sent out. The code data defi n es the t iming infor mation
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`of when to turn on and off the signals to cre ate that envelope
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`to create a 1 or to create a 0 .
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`So, in other words, the code data is data that's used
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`to tell -- to generate, the envelope that tells, in ter ms of
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`t i ming, start the signal at this point and end i t at this point .
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`JUDGE B LANKE NS HIP: Thank you. I
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`understand.
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`MR. KANG: If we turn to page 8 of Exhibi t 1065 .
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`So for purpos es of claim constructio n first we look to the
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`claim terms the mselves. One of the pri mar y reasons why i t is
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`i mproper to includ e instruction s inh erentl y o r i mpor ted into
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`code data is that the Darbee claims s eparatel y claim
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`instructions .
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`So, for exa mple , on the right side of the slid e you
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`have an exc erpt of claim 1 of the '917 patent and i t reads :
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`Infrared codes stored in the memory means, and two -way data
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`coupling means, coupled to the CPU for enabling at least one
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`of inst ructio n codes or infrared code data for gene rating
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`infrared codes .
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
`
`Si mil a rl y, the '077 patent , one of the other Darbee
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`patents, claims code data as a precu rsor to instructions . It
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`says there is data coupling means which includes termin al
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`means co mprising a receivin g port coupl ed to the CPU for
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`enabling code data for creating appropriate IR lamp driver
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`instructions for causing an infrare d signal outpu t means to
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`emit.
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`So, in other word s, in different ways the Darbee
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`claims on their face separ atel y claim instruction s from codes,
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`code data. And s pecificall y and markedl y in claim 1 of the
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`'917 , i t claims them as alternativ es and says you can either
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`coupl e or download inst ructions or get c ode data.
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`And under Patent Owne r's claim const ruction , that
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`" or," that alternative for mulation, would no long er exist ,
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`because if inst ru ctions are always inh erent in code data, the
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`alternativ e no long er exist s in the c l ai m because instructions
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`would alwa ys be required.
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`And on i ts face that is not a proper claim
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`construction , we would sub mit. And this is an atte mpt we
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`believe by Patent Owner to rewrite the claim to i mpo rt a
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`l i mitation into the phrase code data that alread y exi sts
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`separatel y in the claim and makes i t redund ant.
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`Next slide, please. On page 9 of Exhibi t 1065 ,
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`now, if we look to the specificatio n, the specification is
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
`
`si milarl y consist ent with our positio n that code data is a
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`separate i tem from instructions .
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`So, for exa mple , in the '917 patent specification
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`starting at colu mn 7 i t says when i t is desired to up date the
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`code data and/ or instruction s in the RAM. Further down in
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`that colu mn, at l ine 59 , the '917 pat ent teaches that after the
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`infrared code is deciphered, the code data therefo r and
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`instructions for generating such code are stored in a
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`progra mming co mputer.
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`And so the specification teaches us that these are
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`two separate thing s that could be either updated or stored.
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`And i t is, therefo re, inconsist ent with the specification an d
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`how a person of ordinar y skill would read the specification to
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`think that code data inh erentl y includ es instructions .
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`Surp risingl y, Plaintiffs -- I am sorr y, Pat ent
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`Owne r's expert admitted at depositio n that if one were to
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`si mpl y delete the phrase " and instru ction s for generating such
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`code" from the s pecification, that part of the specification
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`would have the same me aning.
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`In other words, Patent Owner's own expert
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`ad mitted that that entire phrase , " and inst ructions for
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`generatin g such code," is redund ant . And that's fou nd at his
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`Depositio n Exhibi t 1053 starting at page 329 .
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`JUDGE M EDLEY : Excus e me, Mr. Kang. I have a
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`question . You p o inted out some of the clai ms , l ike, for
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`exa mple , in the '761 patent, claim 1 , we have the la ngu age
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`instructio n codes or code data for creating , dot, dot, dot,
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`instruction .
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`How is that inst ruction different from instru ctio n
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`codes?
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`MR. KANG: Instruction , in that pa tent they claim
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`separatel y instruction codes which are used to then generate
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`actual inst ructio ns toward the IR lamp driver sepa ratel y from
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`instructions generall y.
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`One of the issu es here is that the Patent Owner has
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`not exactl y de fin ed what instruction s shoul d be read into code
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`data and so they have taken the po sition s that i t is just
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`instructions generall y. Whether i t is that kind of instru ctio n
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`or inst ructio n codes, they have never made cle ar.
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`In our view they shouldn 't be read into code data
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`and, if an ything, that for mulation in the claim, again , shows
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`that when the Patent Owner here wanted to claim in s tructions
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`or inst ructio n codes specificall y, they did so explicitl y and not
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`i mplicitl y as part of the code data.
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`JUDGE M EDLEY : So they have in struction codes
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`or code data for creating inst ructions . So how are we to
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`interpret that second inst ructio n? Because i t seems l ike
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`whether you have instruction codes or code data, they both
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`have to -- which ever one you pick has to have an appropriate
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`driver, or is used for creating approp riate IR lamp driver
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`instructio n?
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`MR. KANG: Rig ht.
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`JUDGE M EDLEY : So how do we i nterpret that
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`second instruction?
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`MR. KANG: So t hos e inst ruction s are the direct
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`inputs to the IR lamp drivers that turn on and off the IR
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`generator. The i n struction codes are precursors to thos e
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`instructions .
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`In other words, there are -- so backing up, there
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`are instructions and types of instructions throug hout -- this is
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`an e mbedded s ys t e m, so there are i nstructions , not all over the
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`place, but there are inst ruction s in stages of the s yste m, and so
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`instructio n codes help generate the actual instructions that are
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`down actuall y co ntrolling the IR lamp driver in the way that
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`claim is for mulated.
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`JUDGE M EDLEY : Okay. Thank you.
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`JUDGE P ETTIGR EW: I' m sorr y. What is the
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`relationship between code data and instructio n codes?
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`MR. KANG: Jud ge Me dle y has asked, in that
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`claim in particul ar, those are two separate ways of g enerating
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`IR lamp driver i nstruction s or precu rsors to IR lamp driver
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`instructions .
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`You can have instruction codes, inst ruction codes
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`can be used to g enerate IR lamp driv er inst ruction s or code
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`data can be used to generate IR lamp driver instruction s
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`because there are different ways to g enerate the proper either
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`t iming or using o ther data to tell the IR lamp driver i tself how
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`to turn on and off. You can do i t by t iming or count i ng.
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`There are many ways to do i t .
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`JUDGE M EDLEY : So instruction in that inst ance
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`seems to be a broader concept than instructio n codes?
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`MR. KANG: Well, if i t is IR lamp driver
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`instructions , in fact, i t is narro wer . It is the specific
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`instructions to d rive, to tell the IR lamp when to turn on and
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`off.
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`JUDGE M EDLEY : Okay. Thank you.
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`MR. KANG: So, again, looking at the
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`specification , go to page 10 , again, the Patent Owner relies
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`upon the specific method disclosed in the specificati on. I
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`previousl y read to you the portio n from colu mn 8 that
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`describes where code data can come from. It can come from
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`prior art method s or from the metho d disclosed herein.
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`For pu rposes of clai m construction , the Patent
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`Owner has focused solel y on the method disclos ed he rein and,
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`in doing so, has ignored other e mb od i ments dis clos ed in the
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`specification from these prior art method s that do not use
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`instructions in the way that the me tho d dis clos ed herein does.
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`And so by i mport ing instructio ns into code data,
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`rel ying on on l y one e mbodi ment , by ne cessi t y the Patent
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`Owne r's claim const ructio n has read out several oth er
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`e mbodi ments dis closed. And, agai n , we thin k that's i mproper
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`in l ight of the sp ecification .
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`So if we look at the next slid e, this is the
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`e mbodi ment in the spe cification r elied on by Patent Owner.
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`It
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`is the bott o m of c olu mn 8 going to the top of colu mn 9 of the
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`'917 specification, and i t is a series of steps -- I hope i t is
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`visible -- but i t is a series of steps, A, B, C, D, and so on, for
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`acquiring code data.
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`And out of all these steps , the Patent Owner has
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`chosen steps C, D, E, F and I as part of i ts definitio n for what
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`constitutes code data, and specifical l y has focused on step C
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`as the " instructions " that should be read into the claim.
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`One of the problems obviously be yon d si mp l y
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`i mporting specific paragraphs from the specification into the
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`claim is the pickin g and choosing that appears to be going on.
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`So, for exa mple , as I mentioned earlier, the parties agree that
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`t iming infor mati on is part of code data, and ele ment B, which
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`is not part of Patent Owner's claim construction , says
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`recording the poin t in t ime of an edge of each puls e in a train
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`of pulses.
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`That is part of the t iming infor mat ion . For
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`whatever reason Patent Owner has chosen not to includ e th at
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`as part of i ts suppo rt for i ts definitio n of code data. And so
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`we would sub mi t that the Patent Owner's approach here has
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`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
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`been essentiall y r esult -oriented in order to get inst ruction s
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`into the claim based on this specific e mbodi ment, which we
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`think is i mproper and not consistent with the rest of the
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`specification .
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`JUDGE P ETTIGR EW: Step J, though , refers to
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`storing the information acquired in step s C, D, E, F and I .
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`MR. KANG: Rig ht.
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`JUDGE P ETTIGR EW: I assu me that's where the
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`refere nc e to C, D, E, F and I comes from?
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`MR. KANG: P re su mabl y, but, aga in, for purposes
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`of what is code data, the storing of the infor mation is, for
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`purpos es of decidin g what is actuall y -- what consti tutes code
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`data before i t is stored, doesn't -- shouldn't depend on where i t
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`is sto red. Code data should be so mething that is construable
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`without refer ence to how i t is sto red .
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`And Patent Owner has not poin
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