Applicant:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Darbee
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01104
`
`v.
`
`Filing Date: October 8, 1993
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,414,761
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`REMOTE CONTROL
`SYSTEM
`
`Attorney Doc.: 059489.144300
`
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`8th day of October 2014.
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`/s/ Eric J. Maiers
`Eric J. Maiers
`
`
`
`

`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“input means . . . for inputting commands into [the/said] remote
`control” (Claims 1, 14, 15, 16, and 17) ................................................. 4
`
`“infrared signal output means [ . . . ] for supplying an infrared signal
`to a controlled device” (Claims 1, 14, 15, 16, and 17).......................... 6
`
`“data coupling means including receiving means coupled to the CPU
`for enabling at least one of (a) instruction codes or (b) code data for
`creating appropriate IR lamp driver instructions … to be supplied
`from outside the remote control through the receiving means directly
`to the CPU for direct entry to the memory” (Claim 1) ......................... 7
`
`“data coupling means for periodically coupling said computer to said
`remote control for receiving from said computer memory and
`inputting into said memory means of said remote control at least one
`of (a) said instruction codes or (b) said code data for ceating
`appropriate IR lamp driver instructions” (Claims 14 and 15), and
`“data coupling means for periodically coupling said computer to said
`remote control for receiving from said computer memory and
`inputting into said memory means of said remote control said
`instruction codes” (Claims 16 and 17) ................................................11
`
`“coupling means for coupling the receiving means to a computer,
`directly, through a telephone line, through a modem and a telephone
`line, or through decoding means and a television set” (Claim 1) .......15
`
`“a data transmission system including said data coupling means for
`coupling said remote control to said computer, directly, through a
`telephone line, through a modem and a telephone line, or through
`decoding means and a television set” (Claims 15 and 17) ..................19
`
`III. THE PETITION DOES NOT MEET THE STATUTORY
`REQUIREMENT OF 35 U.S.C. § 314(a) .....................................................20
`
`
`
`i
`
`

`
`
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Petition Does Not Establish that CS-232 Is Prior Art to the ’761
`Patent Under 35 U.S.C. § 102(b) ........................................................22
`
`Even If the CS-232 Manual Is a “Printed Publication,” It Is Not Prior
`Art to the ’761 Patent ..........................................................................25
`
`The Petition Fails to Identify Why One Having Ordinary Skill in the
`Art Would Have Been Motivated to Combine Wozniak with Either
`CS-232 or Hastreiter (Ground 1) .........................................................54
`
`The Petition Does Not Identify Why One Having Ordinary Skill in the
`Art Would Have Been Motivated to Combine Ciarcia and Hastreiter
`(Ground 2) ...........................................................................................59
`
`IV. CONCLUSION ..............................................................................................60
`
`
`
`
`
`ii
`
`
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Federal Cases
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) .................................................................... 23, 24
`Gen. Elec. Co. v. U.S.,
`572 F.2d 745 (Ct. Cl. 1978) .................................................................................. 5
`In ResQNet.com, Inc. v. Lansa, Inc.,
`594 F.3d 860 (Fed. Cir. 2010) ............................................................................ 24
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) .................................................................... 23, 24
`Kyocera Wireless Corp. v. Int'l Trade Comm'n,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................... 23
`Therasense, Inc. v. Becton, Dickinson & Co.,
`560 F. Supp. 2d 835 (N.D. Cal. 2008) ................................................................ 22
`
`P.T.A.B. Decisions
`3D-Matrix, Ltd. v. Menicon Co., IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014) ................................................................................ 21, 22
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Paper No. 12 (P.T.A.B. Aug. 12, 2013).............................................................. 57
`Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Paper No. 12 (P.T.A.B. July 31, 2013) ............................................................... 57
`OpenTV, Inc. v. Cisco Technology, Inc., IPR2013-00329, Paper 9
`(P.T.A.B. June 20, 2013) .................................................................................... 55
`Research in Motion Corp. v. Wi-Lan USA Inc., IPR2013-00126, Paper
`No. 10 (P.T.A.B. June 20, 2013) ........................................................................ 25
`SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper No.
`15 (P.T.A.B. Dec. 30, 2013) ............................................................................... 57
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)..................................................................................... 22
`
`
`
`
`
`iii
`
`

`
`
`
`Federal Statutes
`
`35 U.S.C. § 102 .................................................................................................. 24, 25
`35 U.S.C. § 102(a) ................................................................................................... 25
`35 U.S.C. § 102(a) – (b) (2010) ............................................................................... 24
`35 U.S.C. § 102(a) and (b) ....................................................................................... 22
`35 U.S.C. § 102(b) ....................................................................................... 22, 23, 24
`35 U.S.C. § 103(a) ..................................................................................................... 2
`35 U.S.C. § 112, ¶ 6 ..........................................................................................passim
`35 U.S.C. § 313 .................................................................................................... 1, 20
`35 U.S.C. § 314(A) .................................................................................................. 20
`
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 3
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 2
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`
`
`
`
`
`iv
`
`
`
`
`
`

`
`TABLE OF EXHIBITS
`
`3D-Matrix, Ltd. v. Menicon Co., IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014)
`
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)
`
`Research in Motion Corp. v. Wi-Lan USA Inc., IPR2013-00126, Paper
`No. 10 (P.T.A.B. June 20, 2013)
`
`OpenTV, Inc. v. Cisco Tech., Inc., IPR2013-00329, Paper 9 (P.T.A.B.
`Nov. 29, 2013)
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Paper No. 12 (P.T.A.B. Aug. 12, 2013)
`
`SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper No.
`15 (P.T.A.B. Dec. 30, 2013)
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Paper No. 12 (P.T.A.B. July 31, 2013)
`
`
`
`
`
`v
`
`
`
`2001.
`
`
`2002.
`
`
`2003.
`
`
`2004.
`
`
`2005.
`
`
`2006.
`
`
`2007.
`
`
`
`
`
`

`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`Universal Electronics Inc. (“UEI” or “Patent Owner”) respectfully submits
`
`this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. §
`
`42.107 in response to the Petition for Inter Partes Review of Claims 1, 9, 10, 14,
`
`15, 16, and 17 of U.S. Patent No. 5,414,761 (’761 Patent) filed by Universal
`
`Remote Control, Inc. (“URC” or “Petitioner”). This Preliminary Response is
`
`timely under 37 C.F.R. § 42.107(b) because it is being filed within three months of
`
`the mailing date of the Notice of Filing Date Accorded to Petition and Time for
`
`Filing Patent Owner Preliminary Response (Paper 3), which was mailed on July 8,
`
`2014.
`
`I.
`
`INTRODUCTION
`In its Petition for Inter Partes Review, Petitioner alleges that the ’761 Patent
`
`is rendered obvious by several prior art references. In Section III.B.2 of the
`
`Petition labeled, “The specific art and statutory grounds on which the challenge is
`
`based,” the Petitioner identifies four references. (Pet. at 5 – 6.) The first reference
`
`is U.S. Patent No. 4,918,439 (“Wozniak”), which was filed on October 5, 1988,
`
`and issued on April 17, 1990. (Id. at 5.) The second reference is U.S. Patent No.
`
`4,667,181 (“Hastreiter”), which was filed on July 15, 1983, and issued on May 19,
`
`1987. (Id.) The Petition indicates that the CS-232 Manual was published in “1998
`
`
`
`1
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`or earlier” based on a copyright notice showing “1987, 1988.” (Id. at 5.) Finally,
`
`the fourth reference is an article written by Steve Ciarcia entitled, “Build a
`
`Trainable Infrared Master Controller” (“Ciarcia”). (Id. at 6.)
`
`The Petition identifies two grounds on which the request for inter partes
`
`review is based. “Ground 1” alleges that “Claims 1, 9, 10, 14, 15, 16, and 17 of the
`
`’761 Patent are obvious over Wozniak (Ex. 1007) in light of the CS-232 Manual
`
`(Ex. 1010) and Hastreiter (Ex. 1008) under 35 U.S.C. § 103(a).” (Id. at 6.)
`
`“Ground 2” alleges that “Claims 1, 9, 10, 14, 15, 16, and 17 of the ’761 Patent are
`
`obvious over Ciarcia (Ex. 1009) in light of Hastreiter (Ex. 1008) under 35 U.S.C. §
`
`103(a).” (Id. at 7.)
`
`The Board should decline to institute an inter partes review proceeding with
`
`respect to the ’761 Patent because each ground suffers from fatal defects. For
`
`example, the Petition does not articulate sufficient reasons—and in some cases any
`
`reason—as to why one having ordinary skill in the art would have been motivated
`
`to combine the asserted references. As a further example, a trial should not be
`
`instituted because the Petition does not comply with 37 C.F.R. § 42.104(b)(4) as it
`
`does not identify where each element recited in Claims 1, 9, 10, 14, 15, 16, and 17
`
`of the ’761 Patent is found in the cited references. Nevertheless, should the Board
`
`
`
`
`
`2
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`decide to institute a trial the Patent Owner reserves the right to present additional
`
`arguments.
`
`II. CLAIM CONSTRUCTION
`In an inter partes review, a claim is construed using the “broadest reasonable
`
`construction in light of the specification.” 37 C.F.R. § 42.100(b). That said,
`
`Petitioner argues that the following phrases from Claims 1, 9, 10, 14, 15, 16, and
`
`17 should be construed:
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`“input means . . . for inputting commands into [the/said]
`remote control” (Claims 1, 14, 15, 16, and 17);
`
`“infrared signal output means [ . . . ] for supplying an
`infrared signal to a controlled device” (Claims 1, 14, 15,
`16, and 17);
`
`“data coupling means including receiving means coupled
`to the CPU for enabling at least one of (a) instruction
`codes or (b) code data for creating appropriate IR lamp
`driver instructions … to be supplied from outside the
`remote control through the receiving means directly to
`the CPU for direct entry to the memory” (Claim 1)
`
`“data coupling means for periodically coupling said
`computer to said remote control for receiving from said
`computer memory and inputting into said memory means
`of said remote control at least one of (a) said instruction
`codes or (b) said code data for creating appropriate IR
`lamp driver instructions” (Claims 14 and 15), and “data
`coupling means for periodically coupling said computer
`to said remote control for receiving from said computer
`memory and inputting into said memory means of said
`remote control said instruction codes” (Claims 16 and
`17); and
`
`
`
`
`
`3
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`(5)
`
`“coupling means for coupling the receiving means to a
`computer, directly, through a telephone line, through a
`modem and a telephone line, or through decoding means
`and a television set” (Claim 1), and “said data coupling
`means for coupling said remote control to said computer,
`directly, through a telephone line, through a modem and
`a telephone line, or through decoding means and a
`television set” (Claims 15 and 17).
`
`(Pet. at 15 – 19.) Therefore, the Preliminary Response will address each phrase
`
`proposed for construction in turn.
`
`A.
`
`“input means . . . for inputting commands into [the/said] remote
`control” (Claims 1, 14, 15, 16, and 17)
`
`The parties agree that the claim term “input means . . . for inputting
`
`commands to [the/said] remote control” is a means-plus-function limitation
`
`pursuant to 35 U.S.C. § 112, paragraph 6, and that the corresponding function is
`
`“inputting commands into the remote control.” However, the correct structure
`
`corresponding to that function should be construed as a set of keys, push buttons,
`
`or equivalents thereof that provide a signal to the CPU when activated so the CPU
`
`will know what function is to be carried out. For performing the function of
`
`“inputting commands into the remote control,” the ’761 Patent describes that “[t]he
`
`operating circuitry also includes several subcircuits. One of those subcircuits 62
`
`(FIG. 9B) includes the keyboard 61 having pushbuttons 25, each of which is
`
`connected to a port 63 of the CPU 56 shown in FIG. 9B and can be referred to as
`
`the keyboard circuit 62.” (’761 Patent col.6 ll.61-65.) “When the CPU 56
`
`
`
`
`4
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`determines which pushbutton 25 has been depressed the CPU 56 will then know
`
`what function is to be carried out.” (’761 Patent col.8 ll.7-9.)
`
`Petitioner proposes a construction in which the structure is limited to “a set
`
`of keys or push buttons (25, shown in FIGS. 1-6 and expressly recited in the
`
`claim), a keyboard circuit (62), and CPU (56) programmed to scan row lines (121-
`
`128) as shown, e.g., in FIG. 9B and described in the specification, e.g., at 6:61-7:4
`
`and 7:54-8:16.” (Pet. at 15-16 (citing Bristow Decl. ¶ 32).) However, Petitioner’s
`
`construction is overly narrow, as it incorporates more structure than is necessary to
`
`perform the specified function. See Gen. Elec. Co. v. U.S., 572 F.2d 745, 776 (Ct.
`
`Cl. 1978) (refusing to incorporate elements into limitation from the specification
`
`not necessary for performing function). For example, Petitioner’s construction for
`
`“input means” includes the structure of a CPU, but Claims 1 and 14-17 separately
`
`recite “a central processing unit (CPU) coupled to [the/said] input means and to
`
`[the/said] signal output means.” (’761 Patent col.22 ll.56-58, col.24 ll.42-44,
`
`col.25 ll.3-5, col.25 ll.31-33, col.25 ll.53-55 (emphasis added).) Since these claims
`
`make clear that the “input means” is coupled to the CPU, it follows that the CPU
`
`does not form a part of the structure of the “input means.” Further, Petitioner has
`
`provided no explanation for why the specific keyboard circuit 62 or a CPU
`
`
`
`
`
`5
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`scanning row lines are necessary to providing the function of inputting commands
`
`to the remote control.
`
`Accordingly, “input means . . . for inputting commands into [the/said]
`
`remote control” should be construed as a set of keys, push buttons, or equivalents
`
`thereof that provide a signal to the CPU when activated so the CPU will know
`
`what function is to be carried out, for performing the function of inputting
`
`commands into the remote control.
`
`B.
`
`“infrared signal output means [ . . . ] for supplying an infrared
`signal to a controlled device” (Claims 1, 14, 15, 16, and 17)
`
`Patent owner agrees that “infrared signal output means for supplying an
`
`infrared signal to a controlled device” is a means-plus-function limitation pursuant
`
`to 35 U.S.C. § 112, paragraph 6, that the function is “supplying an infrared signal
`
`to a controlled device,” and that the corresponding structure is IR lamp driver
`
`circuitry coupled to a CPU and one or more LEDs. However, Patent Owner
`
`disagrees with Petitioner’s proposed construction to the extent that it requires a
`
`specific number of LEDs or other specific aspects of patentee’s preferred
`
`embodiment(s) that are not necessary for supplying an infrared signal to a
`
`controlled device. (See Pet. at 16 (stating that the corresponding structure should
`
`be “IR lamp driver circuitry (expressly recited in claim) connected to CPU (56)
`
`
`
`
`
`6
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`and corresponding LEDs (1, 2, 3) as shown, e.g., in FIGS. 7 and 9B, and described
`
`in the specification, e.g., at 6:34-47 and 9:22-23”) (citing Bristow Decl. ¶ 33).)
`
`Accordingly, “infrared signal output means […] for supplying an infrared
`
`signal to a controlled device” should be construed as the structures of IR lamp
`
`driver circuitry coupled to a CPU and one or more LEDs, or equivalents thereof,
`
`for performing the function for supplying an infrared signal to a controlled device.
`
`C.
`
`“data coupling means including receiving means coupled to the
`CPU for enabling at least one of (a) instruction codes or (b) code
`data for creating appropriate IR lamp driver instructions … to be
`supplied from outside the remote control through the receiving
`means directly to the CPU for direct entry to the memory” (Claim
`1)
`
`Patent owner agrees that “data coupling means including receiving means
`
`coupled to the CPU for enabling at least one of (a) instruction codes or (b) code
`
`data for creating appropriate IR lamp driver instructions … to be supplied from
`
`outside the remote control through the receiving means directly to the CPU for
`
`direct entry to the memory” is a means-plus-function limitation pursuant to 35
`
`U.S.C. § 112, paragraph 6, that the function is enabling code data for creating
`
`appropriate IR lamp driver instructions to be supplied from outside the remote
`
`control through the receiving means directly to the CPU for direct entry to the
`
`memory, and that the corresponding structure includes a terminal of a serial
`
`receiving port coupled to an input port of the CPU. However, Patent Owner
`
`
`
`
`
`7
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`disagrees with Petitioner’s proposed construction to the extent that it requires
`
`specific aspects of patentee’s preferred embodiment(s) that are not necessary for
`
`supplying an infrared signal to a controlled device.
`
`For instance, the Petition states that the corresponding structure should be
`
`limited to “a terminal (3) of a serial receiving port … as shown, e.g., in FIG. 9B
`
`and described in the specification, e.g., at 9:11-21 and 9:40-43,” but provides no
`
`explanation as to why the data port should be limited to the specific serial port
`
`shown, much less the detailed arrangement described in the cited portions of the
`
`specification and figures. (Pet. at 16-17 (citing Bristow Decl. ¶ 34) (emphasis
`
`added).) Indeed, any data port is capable of enabling the receipt receiving data,
`
`and the port need not be a serial port.
`
`Further, the Petition states that the corresponding structure should be limited
`
`to a serial receiving port that is “coupled directly to an input port (112) of the CPU
`
`(56).” (Id. (emphasis added).) However, the express language of Claim 1 is
`
`“receiving means coupled to the CPU,” i.e. without limiting the coupling to direct
`
`coupling. Although the corresponding function is enabling code data for creating
`
`appropriate IR lamp driver instructions to be supplied from outside the remote
`
`control through the receiving means directly to the CPU for direct entry to the
`
`memory, the reference to “directly” in that function refers to the flow of the code
`
`
`
`
`
`8
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`data from the outside source to the CPU, and not the nature of the physical
`
`connections between the receiving port and the CPU.
`
`Accordingly, the correct construction of “data coupling means including
`
`receiving means coupled to the CPU for enabling at least one of (a) instruction
`
`codes or (b) code data for creating appropriate IR lamp driver instructions … to be
`
`supplied from outside the remote control through the receiving means directly to
`
`the CPU for direct entry to the memory” is a terminal of a receiving port coupled
`
`to the CPU, or equivalents thereof, for performing the function of enabling code
`
`data for creating appropriate IR lamp driver instructions to be supplied from
`
`outside the remote control through the receiving means directly to the CPU for
`
`direct entry to the memory.
`
`The Petition alleges that the ’761 Patent “does not disclose any structure
`
`specifically for receiving ‘at least one of (a) instruction codes or (b) code data for
`
`creating appropriate IR lamp driver instructions’ and directly entering such ‘code
`
`data’ into the memory.” (Pet. at 17.) As an example, the Petition says that the
`
`’761 Patent includes no “description of software that programs the CPU (56) for
`
`handling the claimed ‘instruction code’ or ‘code data.’” (Id. (citing Bristow Decl.
`
`¶ 35).) In the context of the claim term that the Petition has identified, however,
`
`the “data coupling means including receiving means” allows instruction codes or
`
`
`
`
`
`9
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`code data “for creating appropriate IR lamp driver instructions” to be provided to
`
`the remote control. (Pet. at 16 (quoting Claim 1).) Thus the function at issue here
`
`involves receiving instruction codes or code data from an outside source—not the
`
`creation of appropriate IR lamp driver instructions.
`
`To that end, the ’761 Patent makes plenty clear to those having ordinary skill
`
`in the art the structure that enables this function. For example, the ’761 Patent
`
`discloses terminals of a serial port coupled to ports of the CPU and equivalents
`
`thereof. (E.g., ’761 Patent col.9 ll.11-21, col.9 ll.44-64.) This exemplary structure
`
`can perform the function of receiving instruction codes and code data for creating
`
`IR lamp driver instructions. Moreover, nothing in the ’761 Patent would lead one
`
`having ordinary skill in the art to believe that the terminal of the data port coupled
`
`to the CPU has the ability to receive data, but lacks the ability to receive
`
`“instruction codes” or “code data.” (See Pet. at 17 (distinguishing “code data” and
`
`“instruction codes” from “data”).) Still further, as explained above, the reference
`
`to “directly” that the Petition calls into question refers to the flow of the code data
`
`from the outside source to the CPU (as opposed to the memory), and not the nature
`
`of the physical connections between the receiving port and the CPU. Thus, in all,
`
`the Petition’s discussion about software and the “handling” of instruction code and
`
`code data is simply beside the point.
`
`
`
`
`
`10
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`D.
`
`“data coupling means for periodically coupling said computer to
`said remote control for receiving from said computer memory
`and inputting into said memory means of said remote control at
`least one of (a) said instruction codes or (b) said code data for
`creating appropriate IR lamp driver instructions” (Claims 14 and
`15), and
`
`“data coupling means for periodically coupling said computer to
`said remote control for receiving from said computer memory
`and inputting into said memory means of said remote control said
`instruction codes” (Claims 16 and 17)
`
`Patent owner agrees that in Claims 14 and 15, “data coupling means for
`
`periodically coupling said computer to said remote control for receiving from said
`
`computer memory and inputting into said memory means of said remote control at
`
`least one of (a) said instruction codes or (b) said code data for creating appropriate
`
`IR lamp driver instructions” is a means-plus-function limitation pursuant to 35
`
`U.S.C. § 112, paragraph 6, that the function is “periodically coupling said
`
`computer to said remote control for receiving from said computer memory and
`
`inputting into said memory means of said remote control at least one of (a) said
`
`instruction codes or (b) said code data for creating appropriate IR lamp driver
`
`instructions.” Patent Owner also agrees that in Claims 16 and 17, “data coupling
`
`means for periodically coupling said computer to said remote control for receiving
`
`from said computer memory and inputting into said memory means of said remote
`
`control said instruction codes” is a means-plus-function limitation pursuant to 35
`
`
`
`
`
`11
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`U.S.C. § 112, paragraph 6, that the function is “periodically coupling said
`
`computer to said remote control for receiving from said computer memory and
`
`inputting into said memory means of said remote control said instruction codes.”
`
`Patent Owner further agrees that for both terms, the corresponding structure
`
`includes a terminal of a receiving port coupled to an input port of the CPU.
`
`However, Patent Owner disagrees with Petitioner’s proposed construction to
`
`the extent that it requires specific aspects of patentee’s preferred embodiment(s)
`
`that are not necessary for supplying an infrared signal to a controlled device. For
`
`instance, the Petition states that the corresponding structure should be limited to “a
`
`terminal (3) of a serial receiving port … as shown, e.g., in FIG. 9B and described
`
`in the specification, e.g., at 9:11-21 and 9:40-43,” but provides no explanation as to
`
`why the data port should be limited to the specific serial receiving port shown,
`
`much less the detailed arrangement described in the cited portions of the
`
`specification and figures. (Pet. at 18 (citing Bristow Decl. ¶¶ 36-37) (emphasis
`
`added).) Indeed, any data port is capable of enabling the receipt receiving data,
`
`and the port need not be a serial port.
`
`Further, the Petition states that the corresponding structure should be limited
`
`to a serial receiving port that is “coupled directly to ports (112) of the CPU (56).”
`
`
`
`
`
`12
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`(Id. (emphasis added).) However, the express language of the claims, including
`
`the corresponding function, does not require direct coupling.
`
`Accordingly, the correct construction of “data coupling means for
`
`periodically coupling said computer to said remote control for receiving from said
`
`computer memory and inputting into said memory means of said remote control at
`
`least one of (a) said instruction codes or (b) said code data for creating appropriate
`
`IR lamp driver instructions” is a terminal of a receiving port coupled to an input
`
`port of the CPU, or equivalents thereof, for performing the function of periodically
`
`coupling said computer to said remote control for receiving from said computer
`
`memory and inputting into said memory means of said remote control at least one
`
`of (a) said instruction codes or (b) said code data for creating appropriate IR lamp
`
`driver instructions. Further, the correct construction of “data coupling means for
`
`periodically coupling said computer to said remote control for receiving from said
`
`computer memory and inputting into said memory means of said remote control
`
`said instruction codes” is a terminal of a receiving port coupled to an input port of
`
`the CPU, or equivalents thereof, for performing the function of periodically
`
`coupling said computer to said remote control for receiving from said computer
`
`memory and inputting into said memory means of said remote control said
`
`instruction codes.
`
`
`
`
`
`13
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`Finally, the Board should reject Petitioner’s claim construction argument
`
`that the ’761 Patent does not disclose any structure for “periodically coupling said
`
`computer to said remote control” and “receiving ‘instruction codes’ or ‘code
`
`data.’” (Pet. at 18-19.) For one, the ’810 Patent to which the ’761 Patent claims
`
`priority discloses periodically coupling the remote control to a computer, as
`
`explained in more detail below. (See, e.g., ’810 Patent col.8 ll.46-47 (referencing
`
`“infinite upgradability” for the remote control).) Furthermore, the ’761 Patent also
`
`discloses using a cable to couple the remote control to a computer as well as
`
`various data ports to attach the cable from the computer to the remote control.
`
`(See, e.g., ’761 Patent col.2 ll.55-63 (explaining that the remote control can be
`
`periodically coupled to a computer).) One of ordinary skill in the art would
`
`understand that a cable (from the computer) may be attached and unattached, i.e.,
`
`periodically coupled to the remote control via a data port.
`
`The Petition also alleges that the ’761 Patent lacks structure regarding
`
`receiving code data and instruction codes. However, as explained above in Section
`
`II.C, the ’761 Patent makes clear to those having ordinary skill in the art the
`
`structure that may be used to receive code data and instruction codes.
`
`
`
`
`
`14
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`E.
`
`“coupling means for coupling the receiving means to a computer,
`directly, through a telephone line, through a modem and a
`telephone line, or through decoding means and a television set”
`(Claim 1)
`
`Patent owner agrees that “coupling means for coupling the receiving means
`
`to a computer, directly, through a telephone line, through a modem and a telephone
`
`line, or through decoding means and a television set” is a means-plus-function
`
`limitation pursuant to 35 U.S.C. § 112, paragraph 6, that the function is “coupling
`
`the receiving means to a computer directly, through a telephone line, through a
`
`modem and a telephone line, or through decoding means and a television set,” and
`
`that the corresponding structure includes a cable for coupling the receiving means
`
`of the remote to (i) a computer directly, (ii) a telephone line, (iii) a modem, or (iv)
`
`through a VBI decoder to a television set. However, Patent Owner disagrees with
`
`Petitioner’s proposed construction to the extent that it requires terminals of a serial
`
`port and to the extent it requires specific aspects of patentee’s preferred
`
`embodiment(s) that are not necessary for supplying an infrared signal to a
`
`controlled device.
`
`First, Petitioner asserts that the structure should include “terminals (1-3) of a
`
`serial port coupled directly to ports (112, 121) of the CPU (56) as shown, e.g., in
`
`FIG. 9B and described in the specification, e.g., at 9:11-21 and 9:40-43.” (Pet. at
`
`19.) However, that construction is inconsistent with the express language of the
`
`
`
`
`
`15
`
`

`
`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`claim. In particular, the claimed function includes, in part, “coupling the receiving
`
`means to a computer.” If the function of the “coupling means” is to couple the
`
`“receiving means” to something else, then the “coupling means” itself cannot
`
`include the “receiving means.” Further, Claim 1 states that the “data coupling
`
`means include[es] receiving means,” and Petitioner agrees that the “data coupling
`
`means including receiving means” includes a terminal of a receiving port. (Pet. at
`
`16-17.) Thus, such terminals cannot form part of the claimed “coupling means.”
`
`Further, Petitioner in