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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
`
`
`NOTICE OF OBJECTIONS TO EVIDENCE
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Universal Electronics,
`
`Inc. (“UEI”) hereby provides notice of its objections to Petitioner’s evidence, as
`
`follows:
`
`OBJECTION #1: – Petitioner’s Reply and All Accompanying Exhibits,
`Including Mr. Gafford’s Declaration, Were Not Timely Filed
`
`UEI objects to Petitioner’s Reply (Paper Nos. 20 and 21) and all exhibits
`
`accompanying Petitioner’s Reply (Exs. 1043 and 1050-1063), including the
`
`declaration of Mr. Gafford, all of which were not timely filed in accordance with
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on July 1, 2015.
`
`
`
`
`
`
`
`
`
`/Eric J. Maiers /
`By:
` Eric J. Maiers
`
`
`
`
`
`
`
`
`
`

`
`IPR2014-01106
`
`
`
`U.S. Patent No. 5,255,313
`
`the Patent Trial and Appeal Board’s (the “Board’s”) Scheduling Order of January
`
`6, 2015 (Paper No. 10).
`
`OBJECTION #2: – Petitioner’s Failure to Apprise the Board of Evidence
`Directly Contradicting Its Argument that Mr. Cook Relied on the Filing Date
`of the Application in Construing the Claims
`
`UEI objects under Federal Rule of Evidence 106 to Petitioner’s
`
`characterization of Mr. Cook’s Declaration as being “fundamentally flawed,
`
`unreliable, and unhelpful” because Mr. Cook construed the claims as of the filing
`
`date of the application. (URC Reply at 1-2.) Mr. Cook testified that his opinion
`
`would not have changed regardless of whether the priority date was based on the
`
`application in question or an earlier parent application. (Ex. 1054 at 741-51.)
`
`OBJECTION #3: – Exhibit 1043 Directed to the Product Specification for the
`Intel 8254 Programmable Interval Timer
`
`In addition to Objection #1 above, UEI objects to Exhibit 1043, and any
`
`reliance thereupon in Petitioner’s Reply, as irrelevant under FRE 401 and improper
`
`new evidence and arguments in a reply. § 42.23(b); Office Trial Practice Guide,
`
`77 Fed Reg. 48756, 48767 (August 14, 2012) (“A reply may only respond to
`
`arguments raised in the corresponding opposition. § 42.23. While replies can help
`
`crystalize issues for decision, a reply that raises a new issue or belatedly presents
`
`evidence will not be considered and may be returned.”). Petitioner should have
`
`cited Exhibit 1043 with its Petition. Further, Exhibit 1043 is irrelevant, because
`
`Petitioner has not asserted any invalidity grounds based on Exhibit 1043.
`
`2
`
`

`
`IPR2014-01106
`
`
`
`U.S. Patent No. 5,255,313
`
`OBJECTION #4: – The Gafford Declaration
`
`In addition to Objection #1 above, UEI objects to Mr. Gafford’s Declaration,
`
`and any reliance thereupon in Petitioner’s Reply, as improper new evidence and
`
`arguments in a reply. § 42.23(b); Office Trial Practice Guide, 77 Fed Reg. 48756,
`
`48767 (August 14, 2012) (“A reply may only respond to arguments raised in the
`
`corresponding opposition. § 42.23. While replies can help crystalize issues for
`
`decision, a reply that raises a new issue or belatedly presents evidence will not be
`
`considered and may be returned.”).
`
`OBJECTION #5: – Exhibit 1057 Regarding Excerpts from the September 12,
`2013 Deposition of Jak Hee You
`
`In addition to Objection #1 above, UEI objects to Exhibit 1057, and any
`
`reliance thereupon in Petitioner’s Reply, as being incomplete under Federal Rule
`
`of Evidence 106. UEI also objects to Exhibit 1057 based on Federal Rule of
`
`Evidence 1003, as Exhibit 1057 is illegible and appears to be corrupted.
`
`
`
`
`
`3
`
`

`
`IPR2014-01106
`
`
`
`U.S. Patent No. 5,255,313
`
`
`
`Respectfully Submitted,
`GREENBERG TRAURIG, LLP
`
`
`
`
`
`
`
` /Eric J. Maiers/
`
`
`By: Eric J. Maiers, Reg. No. 59,614
`James J. Lukas, Reg. No. 59,114
`Matthew J. Levinstein, Pro Hac Vice
`Rob R. Harmer, Reg. No. 68,048
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`(312) 456-8400
`
`
`
`
`
`
`
`
`Date: July 1, 2015
`
`
`
`4
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Douglas A. Miro
`Keith Barkaus
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Avenue of the Americas New
`York, NY 10036
`Telephone: (212) 596-0500
`Facsimile: (212) 382-0888
`dmiro@ostrolenk.com
`kbarkaus@ostrolenk.com
`JNgai@ostrolenk.com
`
`Peter H. Kang, Reg. No. 40,350
`Theodore W. Chandler, Reg. No. 50,319
`Ferenc Pazmandi, Reg. No. 66,216
`Sidley Austin LLP
`1001 Page Mill Rd.
`Building One
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (65) 565-7100
`pkang@sidley.com
`tchandler@sidley.com
`fpazmandi@sidley.com
`urc@sidley.com
`
`July 1, 2015
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Eric J. Maiers
`Eric J. Maiers
`
`
`Date:

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