`
`
`Petition for Inter Partes Review under
`35 U.S.C. §§ 311–319
`and 37 C.F.R. § 42.100 et seq.
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`In re Patent of: Darbee
`Patent No.: 5,255,313
`Filed: April 8, 1993
`Issued: October 19, 1993
`Assignee: Universal Electronics Inc.
`Title: UNIVERSAL REMOTE
`CONTROL SYSTEM
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,255,313
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ............................................................................................ iv
`
`I. MANDATORY NOTICES .................................................................. 1
`A. Real Party-In-Interest .................................................................. 1
`B. Related Matters ............................................................................. 1
`C. Lead and Back-Up Counsel ......................................................... 2
`D. Service Information ...................................................................... 3
`
`II. PAYMENT OF FEES .......................................................................... 3
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW ....................... 3
`A. Grounds For Standing .................................................................. 4
`B. Identification of Challenge ........................................................... 4
`1. Claims for which inter partes review is requested ............. 4
`2. The specific art and statutory grounds on which the
`challenge is based ................................................................. 5
`3. How the challenged claims are to be construed ................ 6
`4. How the construed claims are unpatentable under the
`statutory grounds identified in 37 C.F.R. § 42.104(b)(2) . 7
`5. Supporting evidence relied upon to support the challenge
` ................................................................................................ 7
`
`IV. SUMMARY OF THE ’313 PATENT ................................................. 8
`A. Summary Of The Prosecution History of the ’313 Patent (Ex.
`1003) ............................................................................................. 11
`B. Summary Of The Prosecution History of the Parent ’077
`Patent (Ex. 1004) ......................................................................... 12
`
`V. DETAILED CLAIM CONSTRUCTION ......................................... 13
`A. Construction of Terms ................................................................ 13
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’313 PATENT IS UNPATENTABLE ...... 19
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`A. Claims 1, 2, and 20 are obvious over Wozniak (Ex. 1005), the
`CS-232 Manual (Ex. 1008), and Hastreiter (Ex. 1006) ............ 19
`B. Claims 1, 2, and 20 are obvious over Ciarcia (Ex. 1007) and
`Hastreiter (Ex. 1006) ................................................................... 21
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ................................................... 22
`A. Summary of Prior Art ................................................................ 23
`1. U.S. Patent No. 4,918,439 to Wozniak et al. (“Wozniak,”
`Ex. 1005) .............................................................................. 23
`2. CORE Serial Interface (CS-232) Manual (“CS-232
`Manual,” Ex. 1008) ............................................................ 25
`3. “Build a Trainable Infrared Master Controller,” by
`Steve Ciarcia, BYTE March 1987 at pp. 113-123
`(“Ciarcia” - Ex. 1007) ........................................................ 26
`4. U.S. Patent No. 4,667,181 to Hastreiter (“Hastreiter,” Ex.
`1006) .................................................................................... 28
`B. Detailed Grounds for Unpatentability Arguments .................. 29
`1. Ground 1: Claims 1, 2, and 20 of the ’313 Patent are
`unpatentable as obvious over Wozniak (Ex. 1005) in view
`of the CS-232 Manual (Ex. 1008) and Hastreiter (Ex.
`1006) under 35 U.S.C. § 103(a) ......................................... 29
`2. Ground 2: Claims 1, 2, and 20 of the ’313 Patent are
`unpatentable as obvious over Ciarcia in view of
`Hastreiter under 35 U.S.C. § 103(a). ................................ 47
`
`VIII. CONCLUSION ................................................................................... 59
`
`- iii -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`EXHIBIT LIST
`
`1001.
`
`U.S. Patent No. 5,255,313 (filed Apr. 8, 1993) (issued Oct. 19, 1993)
`
`to Paul V. Darbee
`
`1002.
`
`U.S. Patent No. 5,228,077 (filed Sep. 24, 1990) (issued Jul. 13, 1993)
`
`to Paul V. Darbee
`
`1003.
`
`Prosecution history of U.S. Patent Application Serial No. 08/046,105,
`
`which matured into the ’313 Patent
`
`1004.
`
`Prosecution history of U.S. Patent Application Serial No. 07/587,326,
`
`which matured into the ’077 Patent
`
`1005.
`
`U.S. Patent No. 4,918,439 (filed Oct. 5, 1988) (issued Apr. 17, 1990)
`
`to Wozniak et al.
`
`1006.
`
`U.S. Patent No. 4,667,181 (filed Jul. 15, 1983) (issued May 19, 1987)
`
`to James Hastreiter.
`
`1007.
`
`“Build a Trainable Infrared Master Controller,” by Steve Ciarcia,
`
`BYTE March 1987 at pp. 113-123
`
`1008.
`
`“CORE Serial Interface (CS-232) Manual” revision 3.0, Copyright @
`
`1987, 1988 by CL9
`
`
`
`1009.
`
`U.S. Patent No. 4,959,810 (filed Dec. 2, 1987) (issued Sep. 25, 1990)
`
`to Darbee et al.
`
`
`
`1010.
`
`CORE Reference Manual © 1987 CL9
`
`- iv -
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`1011.
`
`Declaration of Stephen D. Bristow In Support of the Petition for Inter
`
`Partes Review of U.S. Patent No. 5,255,313 (“Bristow Declaration”)
`
`1012.
`
`Complaint for Patent Infringement in Universal Electronics, Inc. v.
`
`Universal Remote Control Inc., Civil Action No. SACV 13-00984,
`
`filed June 28, 2013 (“Current UEI Litigation”)
`
`- v -
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`Petitioner Universal Remote Control, Inc. (“Petitioner” “URC”) respectfully
`
`requests inter partes review of claims 1, 2, and 20 of U.S. Patent No. 5,255,313
`
`(the “’313 Patent,” attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311–319
`
`and 37 C.F.R. § 42.100 et seq.
`
`I. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following
`
`mandatory disclosures.
`
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Universal Remote
`
`Control, Inc. is the real party-in-interest.
`
`B. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that claims 1, 2, and 20
`
`of the ’313 Patent are involved in the litigation presently styled Universal
`
`Electronics Inc., v. Universal Remote Control, Inc., Ohsung Electronics Co., Ltd.,
`
`and Ohsung Electronics U.S.A., Inc., Case No. SACV 13-00984 AG (JPRx) (C.D.
`
`Cal.), filed on June 28, 2013 (“2013 UEI Litigation”). Petitioner was the sole
`
`defendant in the 2013 UEI Litigation on July 2, 2013, and consequently, the only
`
`defendant served with the complaint in the 2013 UEI litigation on July 2, 2013.
`
`The 2013 UEI Litigation remains pending. The patents-in-suit are U.S. Patent
`
`
`
`- 1 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`Nos. 5,228,077; 5,255,313; 5,414,761; 5,552,917; RE39,059; 6,407,779;
`
`7,831,930; 7,126,468; 7,589,642; and 8,243,207.
`
`This Petition for inter partes review is directed to U.S. Patent No. 5,255,313.
`
`In the 2013 UEI Litigation, patent owner Universal Electronics, Inc. (“UEI”) has
`
`identified specifically claims 1, 2, and 20 of the ’313 Patent as allegedly infringed
`
`in the Second Amended Complaint and the Disclosure of Asserted Claims.
`
`Accordingly, and in reliance upon UEI’s omission of express claims of
`
`infringement with regard to any other claims of the ’313 Patent in the UEI
`
`Litigation to date, Petitioner seeks inter partes review of asserted claims 1, 2, and
`
`20 of the ’313 Patent.
`
`Petitions for inter partes review corresponding to the asserted claims of the
`
`remaining nine patents in the UEI Litigation will also soon be filed. In light of
`
`this, the Patent Trial and Appeal Board (PTAB) may wish to assign one or more of
`
`any of these other inter partes review actions related to this matter to a common,
`
`single panel of Administrative Patent Judges for administrative efficiency
`
`regarding either coordination or consolidation.
`
`C. Lead and Back-Up Counsel
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel:
`
`Lead Counsel
`
`Back-Up Counsel
`
`
`
`- 2 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`Douglas A. Miro, Reg. No. 31,643
` dmiro@ostrolenk.com
`
`Ostrolenk Faber LLP
`1180 Avenue of the Americas New
`York, NY 10036
`Telephone: (212) 596-0500
`Facsimile:
`(212)
`382-0888USPTO
`Customer No. 02352
`
`
`Peter H. Kang, Reg. No. 40,350
` pkang@sidley.com
`Theodore W. Chandler, Reg. No. 50,319
` tchandler@sidley.com
`Ferenc Pazmandi, Reg. No. 66,216
` fpazmandi@sidley.com
`Sidley Austin LLP
`1001 Page Mill Rd.
`Building One
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (650) 565-7100
`USPTO Customer No. 37803
`
`Service Information
`
`D.
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`II.
`
`PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge to Deposit Account No. 15-
`
`0700 $9,000 for the request fee required by 37 C.F.R. § 42.15(a)(1) and $14,000
`
`for the Post-Institution fee required by 37 C.F.R § 42.15(a)(2) for this Petition for
`
`Inter Parties Review. Review of three claims is being requested, so no excess
`
`claims fee is included in this fee calculation. The undersigned further authorizes
`
`payment for any additional fees that might be due in connection with this Petition
`
`to be charged to the above referenced Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`
`
`- 3 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`inter partes review of the ’313 Patent is satisfied.
`
`A. Grounds For Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ’313
`
`Patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from petitioning for inter partes review of the ’313 Patent on the grounds
`
`identified herein. Neither Petitioner, nor any party in privity with Petitioner, has
`
`filed a civil action challenging the validity of any claim of the ’313 Patent. The
`
`’313 Patent has not been the subject of a prior inter partes review by Petitioner or a
`
`privy of Petitioner.
`
`Petitioner certifies this petition for inter partes review is timely filed.
`
`Specifically, this petition is filed within one year of July 2, 2013, which is the date
`
`URC was served with a Complaint for patent infringement of the ’313 patent in the
`
`2013 UEI Litigation. Because the date of this petition is no more than one year
`
`from July 2, 2013, this petition complies with 35 U.S.C. § 315(b).
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
`
`is that the PTAB cancel as unpatentable claims 1, 2, and 20 of the ’313 Patent.
`
`1.
`
`Claims for which inter partes review is requested
`
`Pursuant to 37 C.F.R. § 42.104(b)(1), Petitioner requests inter partes review
`
`of claims 1, 2, and 20 of the ’313 Patent.
`
`
`
`- 4 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`2.
`
`The specific art and statutory grounds on which the
`challenge is based
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the ’313 Patent
`
`is requested in view of the following references, each of which is prior art to
`
`claims 1, 2, and 20 of the ’313 Patent under one or more of 35 U.S.C. § 102(a), (b),
`
`and/or (e):
`
`(1) U.S. Patent No. 4,918,439 to Wozniak et al. (“Wozniak”) (attached as
`
`Ex. 1005) was filed on Oct. 5, 1988, claiming priority to Application No.
`
`66,786 filed on June 23, 1987, and issued on Apr. 17, 1990. Wozniak is
`
`prior art to claims 1, 2, and 20 of the ’313 Patent at least under 35 U.S.C.
`
`§102(a).
`
`(2) U.S. Patent No. 4,667,181 to Hastreiter (“Hastreiter”) (attached as Ex.
`
`1006) was filed on July 15, 1983 and issued on May 19, 1987.
`
`Hastreiter is prior art to claims 1, 2, and 20 of the ’313 Patent at least
`
`under 35 U.S.C. §102(b).
`
`(3) “CORE Serial Interface (CS-232) Manual” revision 3.0, Copyright @
`
`1987, 1988 by CL9 (“the CS-232 Manual”) (attached as Ex. 1008) was
`
`published in 1988 or earlier. The CS-232 Manual is prior art to claims
`
`1, 2, and 20 of the ’313 Patent at least under 35 U.S.C. §102(b).
`
`(4) “Build a Trainable Infrared Master Controller,” by Steve Ciarcia, BYTE
`
`March 1987 at pp. 113-123 (“Ciarcia”) (attached as Ex. 1007), was
`
`
`
`- 5 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`published in March 1987 or earlier. Ciarcia is prior art to claims 1, 2,
`
`and 20 of the ’313 Patent at least under 35 U.S.C. § 102(b).
`
`The Wozniak reference was considered during prosecution of the ’313
`
`Patent and its parent ’077 Patent. Hastreiter, the CS-232 Manual, and Ciarcia were
`
`not considered during prosecution of the ’313 Patent and its parent ’077 Patent and
`
`present new, non-cumulative technological teachings. A detailed discussion of the
`
`references and their applicability to claims 1, 2, and 20 of the ’313 Patent is
`
`provided starting at Section VII.B.
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the ’313 Patent
`
`is requested on the following grounds.
`
`Ground 1. Claims 1, 2, and 20 of the ’313 Patent are unpatentable as obvious
`
`over Wozniak (Ex. 1005) in light of the CS-232 Manual (Ex. 1008)) and Hastreiter
`
`(Ex. 1006) under 35 U.S.C. § 103(a).
`
`Ground 2. Claims 1, 2, and 20 of the ’313 Patent are unpatentable as obvious
`
`over Ciarcia (Ex. 1007) in light of Hastreiter (Ex. 1006) under 35 U.S.C. § 103(a).
`
`3. How the challenged claims are to be construed
`
`The ’313 Patent has expired. Pursuant to 37 C.F.R. § 42.100(b), the claims
`
`of an expired patent subject to inter partes review do not receive the “broadest
`
`reasonable construction in light of the specification of the patent in which [they]
`
`appear.” Petitioner below construes certain terms that are relevant to the present
`
`
`
`- 6 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`petition. Thus, Petitioner reserves the right to construe different or additional
`
`terms in a different proceedings, e.g., in the pending litigation.
`
`Claims 1, 2, and 20 of the ’313 Patent include means-plus-function
`
`limitations. In Section V.A below, the detailed construction of those limitations
`
`identifies the specific portions of the ’313 specification that describe the structure
`
`to each claimed function.
`
`4. How the construed claims are unpatentable under the
`statutory grounds identified in 37 C.F.R. § 42.104(b)(2)
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how claims 1, 2, and
`
`20 of the ’313 Patent are unpatentable under the statutory grounds identified above,
`
`including an identification of where each element is found in the prior art patents
`
`or printed publications, is provided in Section VII.B below.
`
`5.
`
`Supporting evidence relied upon to support the challenge
`
`Pursuant to 37 C.F.R. § 42.104(b)(5), the exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided in an exhibit list
`
`included herein. The following text of the present Petition identifies the relevance
`
`of the evidence to the challenges raised and identifies specific portions of the
`
`evidence to support the challenges raised under the grounds of unpatentability.
`
`Further supporting evidence, including detailed discussions of the respective prior
`
`art references, is provided in the Bristow Declaration (Ex. 1011).
`
`
`
`- 7 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`IV. SUMMARY OF THE ’313 PATENT
`
`The ’313 Patent is entitled UNIVERSAL REMOTE CONTROL SYSTEM.
`
`Ex. 1001. The application for the ’313 Patent was filed naming Paul Darbee as a
`
`sole inventor on April 8, 1993, as a continuation of U.S. Pat. No. 5,228,077 (Ex.
`
`1002) which, in turn, is a continuation-in-part of U.S. Pat. No. 4,959,810 (the
`
`“’810 Patent”, attached as Ex. 1009). The parent ’077 Patent also names Darbee as
`
`a sole inventor, and the grandparent ’810 Patent names four co-inventors, including
`
`Paul Darbee. As discussed below, claims 1, 2, and 20 of the ’313 Patent are not
`
`entitled to the priority date of the ’810 Patent.
`
`The ’313 patent discloses a universal remote control:
`
`
`
`
`
`Ex. 1001 at FIGS. 1 and 8. The universal remote control of the ’313 Patent
`
`includes a microprocessor and a non-volatile random access memory (RAM) to
`
`store a library of code data for generating infrared light to control apparatus, like a
`
`television. Id. The RAM can be loaded with instructions and data from a
`- 8 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`programming computer (200) using a special connector (204) which attaches to
`
`and disables the microprocessor (CPU 56):
`
`
`
`
`
`Ex. 1001 at FIGs. 10 & 20. The ’313 Patent also discloses a signal coupling and
`
`converting assembly (206) that can be connected to a personal computer at one
`
`end, and to serial ports of the microprocessor at the other end. Id. at FIG. 20.
`
`Those serial ports include a transmitting port (1) and a receiving port (3) that can
`
`be used “to update the code data and/or instructions in the RAM”:
`
`
`
`
`
`Ex. 1001 at FIGS. 21–22 and 9:7-16, 21:61-63; see also FIG. 9B.
`- 9 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`Compared to the parent ’810 Patent, the ’313 and ’077 Patents disclose
`
`additional subject matter (FIGS. 23–26) that is related to a data transmission
`
`system in which the remote control is coupled to a remote computer through a
`
`telephone line using an external modem (FIGS. 23 and 24) or an internal modem
`
`(FIG. 26) or through a television signal using a VBI decoder (FIG. 25):
`
`
`
`
`
`
`
`
`
`Ex. 1001 at 20:56-21:53, and FIGS. 23-26.
`
`Compared to the parent ’077 and ’810 Patents, the ’313 Patent discloses
`
`additional subject matter related to “periodically coupling the computer to the
`
`remote control.” See Ex. 1001 at Abstract, 2:23-25, and 2:51-53.
`
`Claims 1 and 2 of the ’313 Patent expressly recite the subject matter that was
`
`added in the application for the ’077 Patent. See, e.g., Ex. 1001, claims 1 and 2
`
`(“coupling means for coupling … through a telephone line, through a modem and
`
`a telephone line, or through decoding means and a television set”).
`
`
`
`- 10 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`Claims 1 and 20 expressly recite the subject matter that was added in the
`
`application for the ’313 Patent. See, e.g., Ex. 1001, claims 1 and 20 (“data
`
`coupling means for periodically coupling said computer to said remote control”).
`
`As the grand parent ’810 Patent has description of neither the claimed
`
`“periodical” coupling nor the claimed connection through modem, telephone line,
`
`and television set, it follows that claims 1, 2 and 20 of the ’313 Patent are not
`
`entitled to the priority date of the ’810 Patent. Thus, the earliest effective filing
`
`date of claims 1, 2, and 20 is no earlier than the actual filing date of September 24,
`
`1990, for the ’077 Patent (and for claims 1 and 20, no earlier than the actual filing
`
`date of April 8, 1993, for the ’313 Patent).
`
`A.
`
`Summary Of The Prosecution History of the ’313 Patent (Ex.
`1003)
`
`The application for the ’313 Patent was filed as a continuation of the ’077
`
`Darbee patent on April 8, 1993. Ex. 1003. A preliminary amendment, filed with
`
`the application, introduced a new Summary, a new Abstract, and new claims. The
`
`new Summary and Abstract, as well as some of the new claims, introduced new
`
`subject matter related to “periodically coupling the computer to the remote
`
`control.” Ex. 1003 at 130–38.
`
`After Examiner’s amendments and the applicant’s filing of a terminal
`
`disclaimer over the ’077 patent, the claims were allowed. See id. at 144–152. The
`
`Examiner’s reasons for allowance referred to “a universal remote control system
`
`
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`which is coupled to a computer for receiving code data for creating appropriate
`
`infrared lamp driver instructions for causing the infrared signal output means to
`
`emit infrared signal for operating a variety of devices to be controlled.” Ex. 1003
`
`at 151. The ’313 Patent issued on October 19, 1993.
`
`B.
`
`Summary Of The Prosecution History of the Parent ’077 Patent
`(Ex. 1004)
`
`The application for the ’077 patent was filed as a continuation in part of the
`
`’810 patent on September 24, 1990. In the first Office Action (mailed 8/5/1991),
`
`the Examiner found that the claims are not entitled to the priority date of their
`
`parent, and rejected the claims over a number of prior art references, including
`
`U.S. Pat. No. 4,918,439 to Wozniak et al. (“Wozniak”). Ex. 1004 at 116–25.
`
`In their Response of February, 1992, the applicants argued that Wozniak
`
`discloses a “learning” remote control which can learn the infra red (IR) codes
`
`through a sensor and the phone connection is used to input commands, not “code
`
`data for creating appropriate IR LED driver instructions for emitting signals for
`
`causing specific functions to occur in a specific controlled device.” Id. at 133–34.
`
`After another rejection, the applicants amended the claims to require, in part,
`
`“IR lamp driver circuitry,” “a receiving port,” and “code data for creating
`
`appropriate IR lamp driver instructions,” and argued that in the prior art, like
`
`Wozniak, the phone line is used only to transmit commands (alternates to keys)
`
`and not the claimed “code data for creating appropriate IR lamp driver
`
`
`
`- 12 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
`
`instructions,” as required by the amended claims. Id. at 156–67.
`
`In light of the amendments and arguments, the Examiner allowed the claims
`
`without providing expressly his reasons for the allowance. Id. at 170–71.
`
`The ’077 patent (Ex. 1002) issued on July 13, 1993.
`
`V. DETAILED CLAIM CONSTRUCTION
`
`A. Construction of Terms
`Since the ’313 Patent has expired, claim terms in the presently requested
`
`inter partes review proceeding are to be construed as understood by skilled artisans
`
`at the time in light of the specification and the prosecution history of the ’313
`
`Patent. Petitioner below construes certain terms that are relevant to the present
`
`petition. Thus, Petitioner reserves the right to construe different or additional
`
`terms in a different proceedings, e.g., in the pending litigation.
`
`The term “periodically coupling said computer to said remote control” was
`
`understood by skilled artisans at the time to have its plain and ordinary meaning
`
`that the computer and the remote control are coupled repeatedly at regular
`
`intervals.
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`Claims 1, 2, and 20 recite means-plus-function limitations that should be
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`construed as follows:
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`(1) “input means … for inputting commands into the remote
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`control” (Claims 1, 2, and 20)
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`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
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`The function of the “input means” is inputting commands into the remote
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`control. The ’313 Patent (Ex. 1001) discloses that this function is performed by a
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`structure that includes a set of keys or push buttons (25), shown in FIGS. 1-6 and
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`expressly recited in the claims, a keyboard circuit (62), and CPU (56) programmed
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`to scan row lines (121-128) as shown, e.g., in FIG. 9B and described in the
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`specification, e.g., at 6:57-68 and 7:50-8:12. See Ex. 1011 (Bristow Decl.) ¶ 31.
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`(2) “infrared signal output means for supplying an infrared
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`signal to a controlled device” (Claims 1, 2, and 20)
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`The function of the “infrared signal output means” is supplying an infrared
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`signal to a controlled device. The ’313 Patent discloses that this function is
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`performed by a structure that includes IR lamp driver circuitry (expressly recited in
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`claims) connected to CPU (56) and corresponding LEDs (1, 2, 3) as shown, e.g., in
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`FIGS. 7 and 9B, and described in the specification, e.g., at 6:29-42 and 9:17-18.
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`See Ex. 1011 (Bristow Decl.) ¶ 32.
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`(3) “data coupling means for periodically coupling said computer
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`to said remote control for receiving from said computer memory said
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`code data for creating appropriate IR lamp driver instructions … said
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`data coupling means for coupling said remote control to said computer,
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`directly, through a telephone line, through a modem and a telephone
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`line, or through decoding means and a television set to receive a
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`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
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`television signal picked up by the television set” (Claim 1)
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`In claim 1, the function of the “data coupling means” is periodically
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`coupling the computer to the remote control for receiving from the computer
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`memory the code data for creating appropriate IR lamp driver instructions, and
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`coupling the remote control to the computer, (i) directly, (ii) through a telephone
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`line, (iii) through a modem and a telephone line, or (iv) through decoding means
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`and a television set to receive a television signal picked up by the television set.
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`The functions (i), (ii), (iii) and (iv) are alternatives. The ’313 Patent discloses that
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`this function is performed by a structure that includes terminals (1-3) of a serial
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`port coupled directly to ports (112, 121) of the CPU (56) as shown, e.g., in FIG. 9B
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`and described in the specification, e.g., at 9:7-16 and 9:35-38. The structure also
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`includes a cable with a first connector to the remote’s terminal and a second
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`connector with an interface for connecting to (i) a computer directly, (ii) a
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`telephone line, (iii) a modem, or (iv) through a VBI decoder to a television set as
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`shown in (i) FIGS. 20-22, (ii) FIG. 26, (iii) FIGS. 23 and 24, and (iv) FIG. 25,
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`respectively, and described in the specification at corresponding parts at 19:39-
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`21:53. See Ex. 1011 (Bristow Decl.) ¶¶ 33–34.
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`Petitioner notes that the ’313 Patent discloses an RS-232 interface to receive
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`data in general and “at any time.” See, e.g., 21:61-22:4. The ’313 Patent,
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`however, does not disclose any structure for “periodically coupling said computer
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`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
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`to said remote control” and no structure is disclosed specifically for receiving
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`“code data for creating appropriate IR lamp driver instructions” as recited in the
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`function of the “data coupling means.” For example, the ’313 Patent lacks any
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`description of how the periodic coupling is performed. See Ex. 1011 (Bristow
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`Decl.) ¶ 36. Also, the ’313 Patent only mentions a “serial port driver” in general
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`but lacks any description of software that programs the CPU (56) for handling such
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`“code data” in particular. See Ex. 1011 (Bristow Decl.) ¶ 35. Thus, Petitioner
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`believes that the specification lacks the structure required for the claimed “data
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`coupling means.” However, to the extent the Board finds that sufficient structure
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`has been disclosed, Petitioner submits that the prior art discloses at least that much
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`structure as the ’313 Patent.
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`(4) “data coupling means including terminal means comprising a
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`receiving port coupled to said CPU for enabling code data for creating
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`appropriate IR lamp driver instructions … to be supplied from outside
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`said remote control through said receiving port of said terminal means
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`directly to said CPU for direct entry to said memory means” (Claim 2)
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`In claim 2, the function of the “data coupling means” is enabling code data
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`for creating appropriate IR lamp driver instructions to be supplied from outside the
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`remote control through the receiving port of the terminal means directly to the
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`CPU for direct entry to the memory. The ’313 Patent discloses that this function is
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`
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`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
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`performed by a structure that includes a terminal (3) of a serial receiving port
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`coupled directly to an input port (112) of the CPU (56) as shown, e.g., in FIG. 9B
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`and described in the specification, e.g., at 9:7-16 and 9:35-38. See Ex. 1011
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`(Bristow Decl.) ¶ 37.
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`As discussed above with reference to the “data coupling means” of claim 1,
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`the ’313 Patent does not disclose any structure specifically for handling “code
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`data” as recited in the corresponding function. Thus, Petitioner believes that the
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`specification lacks the structure required for the claimed “data coupling means.”
`
`(5) “coupling means for coupling said terminal means to a
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`computer, directly, through a telephone line, through a modem and a
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`telephone line, or through decoding means and a television set” (Claim
`
`2)
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`In claim 2, the function of the “coupling means” is coupling the terminal
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`means to a computer (i) directly, (ii) through a telephone line, (iii) through a
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`modem and a telephone line, or (iv) through decoding means and a television set.
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`The functions (i), (ii), (iii) and (iv) are alternatives. The ’313 Patent discloses that
`
`this function is performed by a structure that includes a cable with a first connector
`
`to the remote’s terminal and a second connector with an interface for connecting to
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`(i) a computer directly, (ii) a telephone line, (iii) a modem, or (iv) through a VBI
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`decoder to a television set as shown in (i) FIGS. 20-22, (ii) FIG. 26, (iii) FIGS. 23
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`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
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`and 24, and (iv) FIG. 25, respectively, and described in the specification at
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`corresponding parts at 19:39-21:53. See Ex. 1011 (Bristow Decl.) ¶¶ 38–39.
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`(6) “data coupling means for periodically coupling said computer
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`to said remote control for receiving from said computer memory and
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`inputting into said memory means of said remote control said code data
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`for creating appropriate IR lamp driver instructions” (Claim 20)
`
`In claim 20, the function of the “data coupling means” is periodically
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`coupling said computer to said remote control for receiving from said computer
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`memory and inputting into said memory means of said remote control said code
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`data for creating appropriate IR lamp driver instructions. The ’313 Patent discloses
`
`that this function is performed by a structure that includes terminals (1-3) of a
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`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 9:7-16 and 9:35-38. The
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`structure also includes a cable with a first connector to the remote’s terminal and a
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`second connector with an interface for connecting to (i) a computer directly, (ii) a
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`telephone line, (iii) a modem, or (iv) through a VBI decoder to a television set as
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`shown in (i) FIGS. 20-22, (ii) FIG. 26, (iii) FIGS. 23 and 24, and (iv) FIG. 25,
`
`respectively, and described in the specification at corresponding parts at 19:39-
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`21:53. See Ex. 1011 (Bristow Decl.) ¶¶ 40–41.
`
`As discussed above with reference to the “data coupling means” of claim 1,
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`
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`

`Petition for Inter Partes Review of U.S. Patent No. 5,255,313
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`the ’313 Patent does not disclose any structure for “periodically coupling said
`
`computer to said remote control” and no structure is disclosed specifically for
`
`receiving “code data.” Thus, Petitioner believes that the specification lacks the
`
`structure required for the claimed “data coupling means.”
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’313 PATENT IS UNPATENTABLE
`
`Petitioner provides prior art publications demonstrating unpatentability of
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`claims 1, 2, and 20 of the ’313 Patent. The following descriptions will demonstrate
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`these grounds of unpatentability in detail, and they provide a reasonable likelihood
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`that claims 1, 2,