`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Applicant:
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`Darbee
`
`Universal Remote Control, Inc.
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`Case No.:
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`IPR2014-01106
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`v.
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`Filing Date: April 8, 1993
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`Universal Electronics, Inc.
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`Patent No.:
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`5,255,313
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`Trial Paralegal: Cathy Underwood
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`Title:
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`UNIVERSAL
`REMOTE CONTROL
`SYSTEM
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`Attorney Doc.: 059489.144100
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`NOTICE OF OBJECTIONS TO EVIDENCE
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`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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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Universal Electronics,
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`Inc. (“UEI”) hereby provides notice of its objections to Petitioner’s evidence, as
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`follows:
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`OBJECTION #1: – Petitioner’s Reply and All Accompanying Exhibits,
`Including Mr. Gafford’s Declaration, Were Not Timely Filed
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`UEI objects to Petitioner’s Reply (Paper Nos. 20 and 21) and all exhibits
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`accompanying Petitioner’s Reply (Exs. 1043 and 1050-1063), including the
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`declaration of Mr. Gafford, all of which were not timely filed in accordance with
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`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on July 1, 2015.
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`
`
`
`/Eric J. Maiers /
`By:
` Eric J. Maiers
`
`
`
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`
`
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`IPR2014-01106
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`
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`U.S. Patent No. 5,255,313
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`the Patent Trial and Appeal Board’s (the “Board’s”) Scheduling Order of January
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`6, 2015 (Paper No. 10).
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`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
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`UEI objects under Federal Rule of Evidence 106 to Petitioner’s
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`characterization of Mr. Cook’s Declaration as being “fundamentally flawed,
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`unreliable, and unhelpful” because Mr. Cook construed the claims as of the filing
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`date of the application. (URC Reply at 1-2.) Mr. Cook testified that his opinion
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`would not have changed regardless of whether the priority date was based on the
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`application in question or an earlier parent application. (Ex. 1054 at 741-51.)
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`OBJECTION #3: – Exhibit 1043 Directed to the Product Specification for the
`Intel 8254 Programmable Interval Timer
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`In addition to Objection #1 above, UEI objects to Exhibit 1043, and any
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`reliance thereupon in Petitioner’s Reply, as irrelevant under FRE 401 and improper
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`new evidence and arguments in a reply. § 42.23(b); Office Trial Practice Guide,
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`77 Fed Reg. 48756, 48767 (August 14, 2012) (“A reply may only respond to
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`arguments raised in the corresponding opposition. § 42.23. While replies can help
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`crystalize issues for decision, a reply that raises a new issue or belatedly presents
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`evidence will not be considered and may be returned.”). Petitioner should have
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`cited Exhibit 1043 with its Petition. Further, Exhibit 1043 is irrelevant, because
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`Petitioner has not asserted any invalidity grounds based on Exhibit 1043.
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`2
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`OBJECTION #4: – The Gafford Declaration
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`In addition to Objection #1 above, UEI objects to Mr. Gafford’s Declaration,
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`and any reliance thereupon in Petitioner’s Reply, as improper new evidence and
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`arguments in a reply. § 42.23(b); Office Trial Practice Guide, 77 Fed Reg. 48756,
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`48767 (August 14, 2012) (“A reply may only respond to arguments raised in the
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`corresponding opposition. § 42.23. While replies can help crystalize issues for
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`decision, a reply that raises a new issue or belatedly presents evidence will not be
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`considered and may be returned.”).
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`OBJECTION #5: – Exhibit 1057 Regarding Excerpts from the September 12,
`2013 Deposition of Jak Hee You
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`In addition to Objection #1 above, UEI objects to Exhibit 1057, and any
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`reliance thereupon in Petitioner’s Reply, as being incomplete under Federal Rule
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`of Evidence 106. UEI also objects to Exhibit 1057 based on Federal Rule of
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`Evidence 1003, as Exhibit 1057 is illegible and appears to be corrupted.
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`3
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`
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`Respectfully Submitted,
`GREENBERG TRAURIG, LLP
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` /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
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`
`
`
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`
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`Date: July 1, 2015
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on the below date, I caused the
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`foregoing to be served upon the following counsel of record via electronic mail
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`(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
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`July 1, 2015
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` /s/ Eric J. Maiers
`Eric J. Maiers
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`Date: