IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Applicant:
`
`Darbee
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01106
`
`v.
`
`Filing Date: April 8, 1993
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,255,313
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`UNIVERSAL
`REMOTE CONTROL
`SYSTEM
`
`Attorney Doc.: 059489.144100
`
`
`DECLARATION OF ALEX COOK
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Universal Electronics Exhibit 2029, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01106
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`IPR2014-01106
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Applicant:
`
`Darbee
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01106
`
`v.
`
`Filing Date: April 8, 1993
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,255,313
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`UNIVERSAL
`REMOTE CONTROL
`SYSTEM
`
`Attorney Doc.: 059489.144100
`
`
`DECLARATION OF ALEX COOK
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Universal Electronics Exhibit 2029, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01106
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`IPR2014-01106
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`I, Alex Cook, hereby declare as follows:
`
`I.
`
`Background And Qualifications
`
`1. My name is Alex Cook. I began work with home entertainment devices in
`
`the employ of a major equipment supplier to the cable TV industry in 1983 as an
`
`engineer designing set-top boxes. I have been directly involved in the design and
`
`development of remote control devices, including multi-device remote, two-way
`
`remotes and remotes with displays. In my work with cable TV and set-top boxes, I
`
`have dealt directly with the issues involved in the configuration and use of home
`
`entertainment systems. I am a member of the Society of Cable
`
`Telecommunications Engineers (SCTE) and have participated in the setting of
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`technical standards for use by the cable TV industry and in the IrDA setting
`
`standards for infrared data communication. I currently consult with Comcast Cable
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`in the development of new electronic devices for the home.
`
`2.
`
`In 1977, I earned a Bachelor of Electrical Engineering degree from the
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`Georgia Institute of Technology in Atlanta, GA.
`
`3.
`
`In 1978, I attended additional non-degree graduate level classes at Georgia
`
`Tech.
`
`4.
`
`Between the years of 1975 and 1977, I worked for the Georgia Tech
`
`Research Institute, where my responsibilities included computer programming and
`
`millimeter-wave and submillimeter-wave spectroscopy.
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`Universal Electronics Exhibit 2029, Page 2
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`5.
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`Between the years of 1978 and 1979 I worked for the Georgia Tech
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`Research Institute as a Research Engineer, where my job responsibilities included
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`the design of a distributed process energy management and control system, the
`
`design and programming of microcomputer circuits, and the design of power line
`
`data transmission circuits.
`
`6.
`
`Between the years of 1979 and 1980, I worked for Datec Systems, Inc., as an
`
`Engineer. At Datec, I helped develop a distributed process control system for the
`
`Strategic Petroleum Reserve. In this role, I developed real-time programming of
`
`supervisory control and data acquisition systems.
`
`7.
`
`Between the years of 1981 and 1983, I worked as an engineer for Loral
`
`Information and Display Systems in Atlanta, GA, as a Principal Engineer. My
`
`responsibilities there included the design of high speed display generator hardware
`
`for tactical displays in military aircraft.
`
`8.
`
`Between the years of 1983 and 1996, I worked in various engineering and
`
`engineering management positions at Scientific-Atlanta, Inc., in Norcross, GA, a
`
`major supplier of products to the cable TV industry. As an engineer, I designed set-
`
`top boxes for cable television including various remote control devices for use in
`
`cable TV. My work included hardware design of both digital and analog circuits,
`
`software design for microprocessors, product features and user interface design,
`
`and the design of all aspects of remote controls for use in cable TV. My
`
`Universal Electronics Exhibit 2029, Page 3
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`responsibilities also included the drafting of patent disclosures and the extensive
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`review of patents in the field of cable TV technology (including remote controls).
`
`During this time I worked daily with entertainment system technology; basic,
`
`multi-device, and universal remote controls; and all aspects of user experience in
`
`home entertainment.
`
`9.
`
`Since 1996, I have worked as a consultant in product development including
`
`consulting work for UEI in 1996.
`
`10.
`
`I have also previously served as an expert witness for UEI in several patent
`
`infringement actions. Those litigations include Phillips Electronics North America
`
`Corp. v. Universal Electronics Inc., No. 94-392-RRM (D. Del. 1994) and
`
`Universal Electronics Inc. v. Remote Technologies, Inc., No. 8-06-cv-00566 (C.D.
`
`Cal. 2006).
`
`11. From 2010 to the present, I have been a consultant to Comcast Cable. In that
`
`role, I have assisted in the development of the next generation of cable TV devices
`
`for the cable consumer, including set-top boxes, video gateways, video client
`
`devices, remote controls, and wireless devices for the home.
`
`12.
`
`I am a named inventor on four granted and pending U.S. patents and patent
`
`applications, the majority of which relate to cable TV devices and technology
`
`including the use of infrared signaling to program set-top boxes and a two-way
`
`remote control with an LCD display.
`
`Universal Electronics Exhibit 2029, Page 4
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`13.
`
`I have been retained in this matter by UEI to provide an analysis of U.S.
`
`Patent No. 5,255,313 (the “‘313 patent”) pursuant to the Board’s decision
`
`instituting an inter partes review of Claims 1, 2, and 20 of the ‘313 patent. I have
`
`also been retained to analyze what a person of ordinary skill in the art in the
`
`relevant field would have understood as of the priority date for the ‘313 patent. I
`
`understand that there was a dispute between the parties as to whether the priority
`
`date of the ‘313 patent is in 1987 or 1990. My opinions contained herein would
`
`not change regardless of whether the priority date of the ‘313 patent is 1987 or
`
`1990.
`
`14.
`
`I am being compensated at the rate of $350 per hour for my work. My fee is
`
`not contingent on the outcome of this matter, or on the positions I have taken in
`
`this declaration. I have no financial interest in Petitioner Universal Remote
`
`Control, Inc.
`
`15.
`
`It is my understanding that UEI owns the ‘313 patent. I have no financial
`
`interest in UEI.
`
`II. Materials Considered
`
`16.
`
`In preparing this declaration, I reviewed the Petition, the ‘313 patent and its
`
`prosecution history, the Declaration of Stephen D. Bristow, the Ciarcia and
`
`Hastreiter references, the Preliminary Response, the Board’s Institution Decision,
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`Universal Electronics Exhibit 2029, Page 5
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`and U.S. Patent No. 4,959,810. In preparing this declaration, I have also relied
`
`upon my personal knowledge and experience in the relevant art.
`
`III. Legal Principles
`
`17.
`
`I will not offer opinions of the law, as I am not an attorney. However,
`
`counsel has informed me of several principles concerning claim construction and
`
`patent validity and invalidity, upon which I have relied to arrive at my conclusions.
`
`18. Counsel has informed me that the purpose of claim construction is to
`
`determine the meaning of the terms in the claims of the ‘313 patent to a person of
`
`ordinary skill in the art as of the time that the patent application leading to the ‘313
`
`patent was filed.
`
`19.
`
`I understand that in inter partes review proceeding, the claim terms of an
`
`expired patent are to be construed in accordance with what one of ordinary skill in
`
`the art would have understood those terms to mean based primarily on the intrinsic
`
`evidence, namely, the claims themselves, the patent specification, and the
`
`prosecution history.
`
`20.
`
`It is my understanding that the words of a claim are generally given their
`
`ordinary and customary meaning to a person of ordinary skill in the art as of the
`
`time that the patent application was filed. This is because patents and patent claims
`
`are addressed to and intended to be read by others of skill in the pertinent art,
`
`rather than the general public.
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`Universal Electronics Exhibit 2029, Page 6
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`21.
`
`It is my further understanding that the same words and phrases within a
`
`claim or claims are presumed to have the same meaning. It is also my
`
`understanding that different words and phrases within a claim or claims are
`
`presumed to have different meanings. Similarly, all words in a claim have
`
`meaning, and a word or phrase in a claim should not be interpreted so as to render
`
`other words or phrases in the claim superfluous.
`
`22.
`
`It is my understanding that the person of ordinary skill in the art is deemed
`
`to read the claim term not only in the context of the particular claim in which the
`
`disputed term appears, but in the context of the entire patent, including the
`
`specification and the prosecution history.
`
`23.
`
`It is my understanding that it is permissible to draft claim terms in a means
`
`plus function format, that is to say, to recite a claim term according to its function,
`
`as opposed to its structure.
`
`24.
`
`I also understand that the scope of a means plus function claim term is
`
`limited to the structures identified in the specification of the patent required to
`
`necessarily perform the claimed function.
`
`25.
`
`I understand that a patent claim is “obvious” and therefore invalid under 35
`
`U.S.C. § 103 if the differences between the claimed invention and the prior art are
`
`such that the claimed invention as a whole would have been obvious before the
`
`Universal Electronics Exhibit 2029, Page 7
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`effective filing date of the claimed invention to a person having ordinary skill in
`
`the art to which the claimed invention pertains.
`
`26.
`
`I understand that an obviousness analysis must consider: (1) the scope and
`
`content of the prior art; (2) the differences between the claims and the prior art; (3)
`
`the level of ordinary skill in the pertinent art; and (4) secondary considerations of
`
`nonobviousness such as unexpected results, commercial success, long-felt but
`
`unsolved needs, failure of others, copy by others, licensing, and skepticism of
`
`experts.
`
`27.
`
`I have been informed that a conclusion of obviousness may be based upon a
`
`combination of prior art references. I understand that it can be important to
`
`identify a reason that would have prompted a person of ordinary skill in the
`
`relevant field to combine the elements in a way the claimed new invention does. I
`
`further understand that to determine obviousness the courts look to the interrelated
`
`teachings of multiple patents, the effects of demands known to the design
`
`community or present in the marketplace, and the background knowledge
`
`possessed by a person having ordinary skill in the art.
`
`IV. The State Of The Art As Of The Priority Date Of The ‘313 Patent
`
`28. As noted above, I understand from counsel that the priority date of the ’313
`
`Patent is either 1987 or 1990. Again, My opinions contained herein would not
`
`change regardless of whether the priority date of the ‘313 patent is 1987 or 1990.
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`Universal Electronics Exhibit 2029, Page 8
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`29.
`
`It is my opinion that the relevant field is the intersection of the field of
`
`handheld remote control devices using infrared signaling to controlled devices with
`
`the field of computer communications.
`
`30. As noted above, I have nearly four decades worth of experience in that field.
`
`31.
`
`It is my opinion that the level of skill of a person of ordinary skill in the
`
`instant art requires such a person to have a working familiarity with battery-
`
`powered, handheld devices, infrared signaling and protocols, microprocessor-based
`
`circuit design, and computer communications.
`
`32.
`
`I qualify as one having ordinary skill in the art from before the relevant time
`
`period to the present.
`
`V. The ‘313 Patent
`
`33. The ’313 patent discloses a remote control system that includes an
`
`upgradeable universal remote control and a system for transmitting data to the
`
`upgradeable universal remote. I believe that prior to 1987, three types of remote
`
`controls existed. These are “fixed-function” remotes, “learning remotes,” and
`
`“programmable remotes.” The function(s) associated with each key in a fixed-
`
`function remote control are fixed and cannot be changed by the user. In this type
`
`of remote, all functionality is contained in a memory that cannot be changed.
`
`Multiple functions may be associated with each key, as chosen by other keys, but
`
`these multiple functions are pre-defined and limited. The internal operation of the
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`Universal Electronics Exhibit 2029, Page 9
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`remote is also fixed as its programming is contained in a ROM or EPROM
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`memory. Most remote controls prior to the priority date of the ‘313 patent were of
`
`this type.
`
`34.
`
`“Learning remotes,” which can capture, record, and playback the IR
`
`transmissions of other remote controls were known prior to the priority date of the
`
`‘313 patent. Some learning remotes, as mentioned by Ciarcia, required that all
`
`functionality be taught. In other remotes, some fixed-functions may be included
`
`while others can be learned.
`
`35.
`
`“Programmable remotes” allowed fixed or learned functions to be moved
`
`from key to key or assigned to unused keys. Functions could also be grouped
`
`together and assigned to one key (called a “Macro”).
`
`36. These remote control types are not mutually exclusive. In fact, most
`
`learning remotes are also programmable. And most remotes have some fixed or
`
`pre-programmed functionality.
`
`37.
`
`In my opinion, the Ciarcia Master Controller is both a learning and a
`
`programmable remote control.
`
`38. The ‘313 patent discloses a fourth type of remote control, namely the
`
`upgradeable remote control. In Ciarcia, the description of the Master Controller
`
`includes an EPROM. The contents of this type of memory cannot be changed once
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`Universal Electronics Exhibit 2029, Page 10
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`programmed. In the described upgradeable remote of the ‘313 patent, the contents
`
`of all memory can be changed.
`
`VI. Claim Construction
`
`A. “input means … for inputting commands into the remote control”
`(Claims 1, 2, and 20)
`
`39.
`
`I agree with the parties that the claim term “input means … for inputting
`
`commands into the remote control” is a means plus function claim term. I also
`
`agree with the parties that the function associated with this claim term is “inputting
`
`commands in to the remote control.” It is my opinion that the structure
`
`corresponding to the claimed function is a set of keys, push buttons, or something
`
`equivalent to these, that provide a signal to the CPU when activated so the CPU
`
`will know what function is to be carried out. This description refers to the
`
`remote’s keyboard or keypad, used to command the remote control to transmit IR
`
`signals.
`
`40.
`
`I disagree with Petitioner’s overly narrow recitation of the structure that
`
`performs the function of inputting commands into the remote control. For
`
`example, Claims 1, 2 and 20 clearly state that the input means are coupled to the
`
`CPU. The specification also makes it clear that the CPU is not part of the input
`
`means. “When the CPU 56 determines which pushbutton 25 has been depressed
`
`the CPU 56 will then know what function is to be carried out.” (‘313 patent, 8:3-
`
`5.) Accordingly, to one of ordinary skill in the art, the CPU cannot be the structure
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`Universal Electronics Exhibit 2029, Page 11
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`that performs the function of the input means. Further, the ‘313 patent discloses
`
`multiple different types of keypads, also called keyboards. For example the block
`
`diagram in Fig. 8 shows a 4 x 14 “keyboard”. This is also described as a 4 x 14
`
`keyboard at 6:48-49. The schematic of Fig. 9B shows an 8 x 8 arrangement of
`
`keys. As noted, this is effectively an 8 x 7 arrangement yielding 56 keys. Thus,
`
`the structure of the “input means” is a set of one or more keys or pushbuttons and
`
`should not be limited to any particular keypad configuration, as Petitioner asserts.
`
`B.
`
`“infrared signal output means for supplying an infrared signal to
`a controlled device” (Claims 1, 2, and 20)
`
`
`I agree with the parties that the claim term “infrared signal output means for
`
`41.
`
`supplying an infrared signal to a controlled device” is a means plus function claim
`
`term. I also agree with the parties that the function associated with this claim term
`
`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.
`
`42.
`
`I disagree with any proposed construction that requires a specific number of
`
`LEDs or otherwise includes other specific aspects disclosed in the specification of
`
`the ‘313 patent that are not required to supply an infrared signal to a controlled
`
`device.
`
`C.
`
`“data coupling means for periodically coupling said computer to
`said remote control for receiving from said computer memory
`said code data for creating appropriate IR lamp driver
`instructions … said data coupling means for coupling said remote
`control to said computer, directly, through a telephone line,
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`Universal Electronics Exhibit 2029, Page 12
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`through a modem and a telephone line, or through decoding
`means and a television set to receive a television signal picked up
`by the television set” (Claim 1)
`
`I agree with the parties that “data coupling means for periodically coupling
`
`
`43.
`
`said computer to said remote control for receiving from said computer memory
`
`said code data for creating appropriate IR lamp driver instructions … 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 to receive a television signal picked up by the
`
`television set” is a means plus function claim term. I also agree with the parties
`
`that the function is “periodically coupling the computer to the remote control for
`
`receiving from the computer memory the code data for creating appropriate IR
`
`lamp driver instructions, and coupling the remote control to the computer, (i)
`
`directly, (ii) through a telephone line, (iii) through a modem and a telephone line,
`
`or (iv) through decoding means and a television set to receive a television signal
`
`picked up by the television set.
`
`44.
`
`I also agree with the parties that the structure corresponding to this claim
`
`term includes a terminal of a receiving port coupled to a port of the CPU as well as
`
`a cable for coupling the remote’s terminal to (i) a computer directly, (ii) a
`
`telephone line, (iii) a modem, or (iv) through a VBI decoder to a television set.
`
`Universal Electronics Exhibit 2029, Page 13
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`45.
`
`I disagree, however, with Petitioner’s proposed construction because it
`
`requires specific aspects disclosed in the specification of the ‘313 patent that are
`
`not required to meet the claimed function, including that the structure be limited to
`
`the terminals of a serial port.
`
`46.
`
`It is my opinion that a data port, including, but not limited to the serial port
`
`described in the ‘313 patent, enables the receipt of data. Thus, the applicable
`
`structure need not be limited to a serial port.
`
`47.
`
`I also disagree with Petitioner’s assertion that the structure corresponding to
`
`this claim term must be a serial receiving port that is directly coupled to an input
`
`port of the CPU. The plain language of Claim 1, as understood by one of ordinary
`
`skill in the art, would not require “direct” coupling, i.e., a specific type of physical
`
`connection between the receiving port and the CPU as Petitioner appears to
`
`require. Rather, one of ordinary skill in the art would understand the claim
`
`language to be referring to the flow of the code data to the CPU.
`
`48.
`
`I also disagree with Petitioner’s assertion that the structure corresponding to
`
`the “coupling means” must include the specific structures shown in the example of
`
`Figures 20-22 for the connection to a computer directly, the structure shown in the
`
`example of Figure 26 for the connection to a telephone line, the structure shown in
`
`the example of Figures 23 and 24 for the connection to a modem, or the structure
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`Universal Electronics Exhibit 2029, Page 14
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`shown in the example of Figure 25 for the connection to a television set through a
`
`VBI decoder.
`
`49.
`
`In my opinion, the Petitioner simply ignores other structures that one of
`
`ordinary skill in the art would conclude are perfectly acceptable structures that can
`
`perform the claimed function. (‘313 patent, Fig. 10 & col. 9 ll. 39- col. 10 l.4; Fig.
`
`20 & col. 19 ll. 39-55.)
`
`50.
`
`I also disagree with Petitioner’s assertion that the ’313 Patent does not
`
`disclose any structure for “periodically coupling said computer to said remote
`
`control.” (Pet. at 15-16.) The ’313 Patent 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., ’313 Patent col.2 ll.50-58
`
`(explaining that the remote control can be periodically coupled to a computer).) In
`
`my opinion, 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. Further, I have reviewed the’810 Patent to which the ’313
`
`Patent claims priority, and in my opinion, the ‘810 patent also discloses
`
`periodically coupling the remote control to a computer. (See, e.g., ’810 Patent
`
`col.8 ll.46-47 (referencing “infinite upgradability” for the remote control).)
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`Universal Electronics Exhibit 2029, Page 15
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`D.
`
`“data coupling means including terminal means comprising a
`receiving port coupled to said CPU for enabling code data for
`creating appropriate IR lamp driver instructions … to be
`supplied from outside said remote control through said receiving
`port of said terminal means directly to said CPU for direct entry
`to said memory means” (Claim 2)
`
`
`I agree with the parties that the claim term “data coupling means including
`
`51.
`
`terminal means comprising a receiving port coupled to said CPU for enabling code
`
`data for creating appropriate IR lamp driver instructions … to be supplied from
`
`outside said remote control through said receiving port of said terminal means
`
`directly to said CPU for direct entry to said memory means” is a means plus
`
`function claim term. I also agree with the parties that the function associated with
`
`this claim term is “for enabling code data for creating appropriate IR lamp driver
`
`instructions to be supplied from outside said remote control through said receiving
`
`port of said terminal means directly to said CPU for direct entry to said memory
`
`means. I further agree that the corresponding structure for this claim term includes
`
`a terminal of a receiving port coupled to an input port of the CPU.
`
`52.
`
`I disagree, however, with Petitioner’s proposed construction because it
`
`requires specific aspects disclosed in the specification of the ‘313 patent that are
`
`not required to enable code data to be supplied from outside of the remote control
`
`to the CPU.
`
`Universal Electronics Exhibit 2029, Page 16
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`53.
`
`It is my opinion that a data port, including, but not limited to the serial port
`
`described in the ‘313 patent, enables the receipt of data. Thus, the applicable
`
`structure need not be limited to a serial port.
`
`54.
`
`I also disagree with Petitioner’s assertion that the structure corresponding to
`
`this claim term must be a serial receiving port that is directly coupled to an input
`
`port of the CPU. The plain language of Claim 2, as understood by one of ordinary
`
`skill in the art, would not require “direct” coupling, i.e., a specific type of physical
`
`connection between the receiving port and the CPU as Petitioner appears to
`
`require. Rather, one of ordinary skill in the art would understand the claim
`
`language to be referring to the flow of the code data to the CPU.
`
`55.
`
`I further disagree with Petitioner’s argument that the ‘313 patent does not
`
`disclose a structure for receiving code data for creating appropriate IR lamp driver
`
`instructions and directly entering such code data into the memory. Petitioner
`
`misunderstands this claim term. One of ordinary skill in the art would understand
`
`the function of the “data coupling means” is to allow the remote control to receive
`
`code data, not to create the IR lamp driver instructions. Petitioner appears to leap
`
`from data coupling means directly to the IR lamp driver instructions, without
`
`realizing that the data coupling means permit the remote control to receive code
`
`data that is subsequently used to create the IR lamp driver instructions.
`
`Universal Electronics Exhibit 2029, Page 17
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01106
`
`IPR2014-01106
`
`
`
`56. There is ample disclosure of structure in the ‘313 patent specification that
`
`permits receiving code data from outside of the remote control. Any distinction
`
`perceived by Petitioner regarding whether the terminal of the data port coupled to
`
`the CPU can receive data, but not code data, does not exist in the specification of
`
`the ‘313 patent.
`
`E.
`
`“coupling means for coupling said terminal 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 2)
`
`
`I agree with the parties that “coupling means for coupling said terminal
`
`57.
`
`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 claim term. I also agree with the parties that the function associated with
`
`this claim term is “coupling said terminal means to a computer, directly, through a
`
`telephone line, through a modem and telephone line, or through decoding means
`
`and a television set,” and that the corresponding structure is a cable for coupling
`
`the remote’s terminal to (i) a computer directly, (ii) a telephone line, (iii) a modem,
`
`or (iv) through a VBI decoder to a television set.
`
`58.
`
`I disagree, however, with Petitioner’s proposed construction because it
`
`requires specific aspects disclosed in the specification of the ‘313 patent that are
`
`not required to supply an infrared signal to a controlled device. Specifically, I
`
`disagree that the structure corresponding to this claimed function is limited to the
`
`Universal Electronics Exhibit 2029, Page 18
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01106
`
`IPR2014-01106
`
`
`
`example structures shown in Figures 20-25 of the ‘313 patent. The Petitioner
`
`simply ignores other structures that one of ordinary skill in the art would conclude
`
`are perfectly acceptable structures that can perform the claimed function. (’313
`
`Patent, Fig. 10 & col.9 ll.39 – col.10. l.4; id. at Fig. 20 & col.19 ll.39-55.)
`
`F.
`
`“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
`code data for creating appropriate IR lamp driver instructions”
`(Claim 20)
`
`
`I agree with the parties that “data coupling means for periodically coupling
`
`59.
`
`said computer to said remote control for receiving from said computer memory and
`
`inputting into said memory means of said remote control said code data for
`
`creating appropriate IR lamp driver instructions” is a means plus function claim
`
`term. I also agree with the parties that the function corresponding to this claim
`
`term 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 code data for creating appropriate IR lamp driver instructions,” and
`
`that the corresponding structure includes a terminal of a port coupled to ports of
`
`the CPU and a cable.
`
`60.
`
`I disagree, however, with Petitioner’s proposed construction because it
`
`requires specific aspects disclosed in the specification of the ‘313 patent that are
`
`Universal Electronics Exhibit 2029, Page 19
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01106
`
`IPR2014-01106
`
`
`
`not required to meet the claimed function, including that the structure be limited to
`
`the terminals of a serial port.
`
`61.
`
`It is my opinion that a data port, including, but not limited to the serial port
`
`described in the ‘313 patent, enables the receipt of data. Thus, the applicable
`
`structure need not be limited to a serial port.
`
`62.
`
`I also disagree with Petitioner’s assertion that the structure corresponding to
`
`this claim term must be a serial receiving port that is directly coupled to a port of
`
`the CPU. The plain language of Claim 20, as understood by one of ordinary skill
`
`in the art, would not require “direct” coupling, i.e., a specific type of physical
`
`connection between the receiving port and the CPU as Petitioner appears to
`
`require. Rather, one of ordinary skill in the art would understand the claim
`
`language to be referring to the flow of the code data to the CPU.
`
`63.
`
`I also disagree with Petitioner’s assertion that one of the connectors of the
`
`cable is for interfacing with a computer, telephone line, modem, or a VBI decoder
`
`as shown in Figures 20-26 of the ‘313 patent specification. (Pet. at 18.) It is my
`
`opinion that the claimed function of the “data coupling means” makes no reference
`
`to a telephone line, modem, or VBI decoder, nor does it specify whether the
`
`coupling to the computer is direct or indirect. (‘313 patent, col. 25 l.26-col. 26 l.
`
`26.)
`
`Universal Electronics Exhibit 2029, Page 20
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01106
`
`IPR2014-01106
`
`
`
`64.
`
`I also disagree with Petitioner’s assertion that the structure corresponding to
`
`the “data coupling means” must include the specific structures shown in the
`
`example of Figures 20-22 for the connection to a computer directly, the structure
`
`shown in the example of Figure 26 for the connection to a telephone line, the
`
`structure shown in the example of Figures 23 and 24 for the connection to a
`
`modem, or the structure shown in the example of Figure 25 for the connection to a
`
`television set through a VBI decoder.
`
`65.
`
`In my opinion, the Petitioner simply ignores other structures that one of
`
`ordinary skill in the art would conclude are perfectly acceptable structures that can
`
`perform the claimed function. (313 patent, Fig. 10 & col. 9 ll. 39- col. 10 l.4; Fig.
`
`20 & col. 19 ll. 39-55.)
`
`G.
`
`“code data”
`
`66.
`
`In my opinion, the Board should construe code data to mean: “instructions
`
`and timing information for generating an infrared signal.”
`
`67. Claims 1, 2, and 20 explicitly delineate between “code data” and an infrared
`
`signal. (‘313 patent at Claims 1, 2, and 20.)
`
`68. The specification also supports my proposed claim construction of “code
`
`data. Specifically, the specification explains the type of information that makes up
`
`“code data”:
`
`Universal Electronics Exhibit 2029, Page 21
`Universal Remote Control v. Universal Electronics, Trial No.
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