IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re Patent of: Darbee
`
`Universal Remote Control, Inc.
`
`Patent No.: 5,255,313
`
`Filed: Apr. 8, 1993
`
`Issued: Oct. 19, 1993
`
`v.
`
`Universal Electronics, Inc.
`
`Case No. IPR2014-01106
`
`Assignee: Universal Electronics Inc.
`
`Trial Paralegal: Cathy Underwood
`
`Title: UNIVERSAL REMOTE
`CONTROL SYSTEM
`
`PETITIONER’S MOTION TO EXCLUDE CERTAIN INADMISSIBLE
`
`TESTIMONY OF PATENT OWNER’S WITNESS ALEX COOK
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the
`USPTO on this 20th day of July, 2015.
`
`By: / Jeannie Ngai /
`Jeannie Ngai
`
`{01784777.1}
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re Patent of: Darbee
`
`Universal Remote Control, Inc.
`
`Patent No.: 5,255,313
`
`Filed: Apr. 8, 1993
`
`Issued: Oct. 19, 1993
`
`v.
`
`Universal Electronics, Inc.
`
`Case No. IPR2014-01106
`
`Assignee: Universal Electronics Inc.
`
`Trial Paralegal: Cathy Underwood
`
`Title: UNIVERSAL REMOTE
`CONTROL SYSTEM
`
`PETITIONER’S MOTION TO EXCLUDE CERTAIN INADMISSIBLE
`
`TESTIMONY OF PATENT OWNER’S WITNESS ALEX COOK
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the
`USPTO on this 20th day of July, 2015.
`
`By: / Jeannie Ngai /
`Jeannie Ngai
`
`{01784777.1}
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`TABLE OF CONTENTS
`
`Page
`
`Introduction......................................................................................................1
`I.
`Legal Authority................................................................................................2
`II.
`III. Mr. Cook’s Cross-Examination Testimony That The Ciarcia Reference
`Lacks The Claimed “Input Means” Should Be Excluded ...............................3
`A.
`Background ...........................................................................................3
`B.
`Analysis .................................................................................................4
`IV. Mr. Cook’s Redirect Testimony Regarding His Erroneous Claim
`Construction Date Should Be Excluded..........................................................6
`A.
`Background ...........................................................................................6
`B.
`Analysis .................................................................................................8
`Conclusion .......................................................................................................9
`
`V.
`
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`U.S. Patent No. 5,255,313
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`SkinMedica, Inc. v. Histogen Inc.,
`727 F.3d 1187 (Fed. Cir. 2013) ............................................................................2
`
`Waddington North Am., Inc. v. Sabert Corp.,
`No. 09-4883, 2011 U.S. Dist. LEXIS 86632 (D. N.J. Aug. 5, 2011)...............2, 9
`
`Regulations
`
`37 C.F.R. 42.65 ......................................................................................................3, 5
`
`Rules
`
`Federal Rule of Evidence 611................................................................................2, 5
`
`Federal Rule of Evidence 702........................................................................2, 5, 6, 9
`
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`IPR2014-01106
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`I.
`
`Introduction
`
`U.S. Patent No. 5,255,313
`
`Inadmissible testimony should not be part of this trial record. Petitioner
`
`moves for exclusion of certain inadmissible deposition testimony provided by
`
`Patent Owner’s technical expert, Mr. Alex Cook. See Paper 28 at 2 (providing
`
`deadline for motion to exclude). First, during Mr. Cook’s cross examination, he
`
`offered a new basis for distinguishing the Ciarcia reference. See Ex. 1053 at
`
`418:18–423:6. But Mr. Cook admitted that he provided no analysis to support this
`
`new basis and that it was not included in his direct testimony. Thus, the testimony
`
`should be excluded because it is unreliable and is outside the scope of the direct
`
`testimony. Specifically, Petitioner requests exclusion of Ex. 1053 at 419:1–:2,
`
`419:14–:15, 420:5–:21, 421:8–422:2, and 422:9–:13.
`
`Second, Patent Owner engaged in a redirect examination of Mr. Cook during
`
`which Patent Owner asked improper and leading questions aimed at retroactively
`
`curing an erroneous opinion offered by Mr. Cook. See Ex. 1054 at 727:9–751:5.
`
`This testimony should be excluded because it was provided in response to leading,
`
`yes-or-no questions that were essentially attorney argument parading as expert
`
`testimony, and because the procured testimony is unreliable in that it lacked
`
`foundation and was speculative. Specifically, Petitioner requests exclusion of Ex.
`
`1054 at 745:4–:8, 745:15–746:1, 746:13–747:4, 747:11–:16, 747:22, 748:2,
`
`749:10–:11, 749:17–:21, and 750:23–751:3.
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`II.
`
`Legal Authority
`
`U.S. Patent No. 5,255,313
`
`In general, the Federal Rules of Evidence apply in this proceeding. 37
`
`C.F.R. 42.62(a). Federal Rule of Evidence 702 provides:
`
`A witness who is qualified as an expert by knowledge, skill,
`experience, training, or education may testify in the form of an
`opinion or otherwise if:
`(a) the expert’s scientific, technical, or other specialized
`knowledge will help the trier of fact to understand the evidence
`or to determine a fact in issue;
`(b) the testimony is based on sufficient facts or data;
`(c) the testimony is the product of reliable principles and
`methods; and
`(d) the expert has reliably applied the principles and methods to
`the facts of the case.
`
`Federal Rule of Evidence 611(b) provides: “Cross examination should not
`
`go beyond the subject matter of the direct examination . . . .”
`
`“Leading questions should not be used on direct examination except as
`
`necessary to develop the witness’s testimony. . . .” Fed. R. Evid. 611(c);
`
`SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1209–10 (Fed. Cir. 2013)
`
`(finding an expert’s brief responses to leading questions unhelpful); Waddington
`
`North Am., Inc. v. Sabert Corp., No. 09-4883, 2011 U.S. Dist. LEXIS 86632, at
`
`*46–*50 (D. N.J. Aug. 5, 2011) (explaining that if “a witness cannot recall the
`
`events and has difficulty answering an open-ended question, a [trier of fact] is
`
`entitled to find that testimony not credible. Leading questions rob the [trier of fact]
`
`of the ability to make that determination. Repeated leading questions cause
`
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`witnesses to become relatively unnecessary except as sounding boards. The effect
`
`is that the attorney testifies and the [trier of fact] is unable to assess the credibility
`
`of the witness.” (citations and quotations omitted)).
`
`“Expert testimony that does not disclose the underlying facts or data on
`
`which the opinion is based is entitled to little or no weight.” 37 C.F.R. 42.65(a).
`
`III. Mr. Cook’s Cross-Examination Testimony That The Ciarcia Reference
`Lacks The Claimed “Input Means” Should Be Excluded
`
`Background
`A.
`The Board instituted inter partes review of the patent-in-suit. Paper 9 at 2.
`
`One of the claim terms is in means plus function format: “input means including a
`
`set of keys or pushbuttons for inputting commands to the remote control.” Paper 9
`
`at 4. One of the prior art references is an article written by Steve Ciarcia, Build a
`
`Trainable Infrared Master Controller, BYTE, Mar. 1987, at 113 (Ex. 1005)
`
`(“Ciarcia”). Paper 9 at 4. Patent Owner submitted the declaration of an alleged
`
`technical expert, Mr. Alex Cook, in which Mr. Cook provided a claim construction
`
`for the “input means” claim element. Ex. 2029 at ¶¶ 39–40.
`
`Mr. Cook opines in his declaration that the structure for the input means “is
`
`a set of one or more keys or pushbuttons and should not be limited to any
`
`particular keypad configuration.” Ex. 2029 at ¶ 40. Mr. Cook further opines that
`
`the structure for the input means is “a set of keys, push buttons, or something
`
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`U.S. Patent No. 5,255,313
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`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.” Ex. 2029 at ¶ 39.
`
`Ciarcia discloses buttons that provide a signal to the CPU. See, e.g., Paper 1
`
`(Petition) at 37–38; Ex. 1005 (Ciarcia) at 2 and 3 (including Photo 1 and Photo 3,
`
`showing six control buttons) and 5 and 7 (including Figure 1, showing control
`
`switches SW1–SW6 and electric connections corresponding to the six buttons that
`
`provide a signal to the CPU (IC1, Intel 8031)); see also Ex. 1007 (Bristow Decl.)
`
`at ¶¶ 54 and 57. Thus, as Petitioner has shown, Ciarcia satisfies the “input means”
`
`claim element under Patent Owner’s claim construction.
`
`During Mr. Cook’s cross examination, he created a new claim construction
`
`for the “input means,” declaring for the first time that Ciarcia lacked buttons for
`
`inputting commands into the remote control because the buttons in Ciarcia are for
`
`“selecting menu items.” See Ex. 1053 at 419:11–:15. Petitioner properly objected.
`
`See Ex. 1053 at 422:14–423:4.
`
`B.
`
`Analysis
`
`Mr. Cook’s cross examination testimony in Ex. 1053 at 419:1–:2, 419:14–
`
`:15, 420:5–:21, 421:8–422:2, and 422:9–:13 should be excluded for at least three
`
`reasons. First, Mr. Cook admitted that he never applied his claim construction for
`
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`“input means” to analyze whether Ciarcia lacks an “input means,” as he construed
`
`that term. Ex. 1053 at 422:14–:23. Thus, his cross examination testimony is
`
`unreliable because he provided no analysis to support it, and it should be excluded
`
`under Fed. R. Evid. 702, or least accorded no weight under 37 C.F.R. 42.65(a).
`
`Second, Mr. Cook’s testimony should be excluded because it is outside of
`
`the scope of the direct (see Fed. R. Evid. 611)— he admitted he did not apply that
`
`claim construction in his direct testimony. See Ex. 1053 at 422:14–:23; Ex. 2029
`
`at ¶¶ 39–40. Mr. Cook also admitted that nowhere in his declaration did he
`
`describe how Ciarcia lacks an input means. Id. at 420:22–:25 (“Q. You nowhere
`
`in your declaration describe how Ciarcia lacks an input means, do you? A. No.
`
`…”).
`
`Third, Mr. Cook’s cross examination testimony regarding “input means” is
`
`inconsistent with the claim construction he provided in his direct testimony,
`
`according to which “the structure of the ‘input means’ is a set of one or more keys
`
`or pushbuttons.” Ex. 2029 at ¶ 40. This structure of “keys or pushbuttons” is
`
`clearly present in Ciarcia under that construction, and thus there is no support for
`
`the distinction Mr. Cook attempted to make during his cross examination. See,
`
`e.g., Paper 1 (Petition) at 37–38; Ex. 1005 (Ciarcia) at 2 and 3 (including Photo 1
`
`and Photo 3, showing six control buttons) and 5 and 7 (including Figure 1,
`
`showing control switches SW1–SW6 and electric connections corresponding to the
`{01784777.1}
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`six buttons that provide a signal to the CPU (IC1, Intel 8031)); see also Ex. 1007
`
`(Bristow Decl.) at ¶¶ 54 and 57. This inconsistency also creates unreliability. See
`
`Fed. R. Evid. 702.
`
`In sum, an attempt by Mr. Cook to create an on-the-fly new basis for
`
`distinguishing Ciarcia’s “input means,” unsupported by analysis or reasoning and
`
`volunteered by surprise at deposition (and properly objected to), is inherently
`
`unreliable and should be excluded.
`
`IV. Mr. Cook’s Redirect Testimony Regarding His Erroneous Claim
`Construction Date Should Be Excluded
`
`A.
`
`Background
`
`The Darbee patent at issue is a child in a chain of family patents. In Mr.
`
`Cook’s direct testimony, he evaluated the level of skill in the art as of the time of
`
`the patent-in-suit’s filing date rather than as of the legally correct date—the
`
`patent’s priority date. See Ex. 2029 at ¶ 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.”
`
`(emphasis added)). Petitioner secured admissions regarding this erroneous opinion
`
`during cross examination. See, e.g., Ex. 1053 at 495:19–:22, 496:16–:22, 496:23–
`
`497:6. Patent Owner tried to change Mr. Cook’s admissions, on redirect, by asking
`
`a series of leading questions that procured testimony from Mr. Cook that his view
`
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`
`on this subject did not have any effect. See Ex. 1054 at 741:21–751:3. Petitioner
`
`properly objected. See id.
`
`As noted in Petitioner’s response to Patent Owner’s reply to the Petition, this
`
`legal error by Mr. Cook is one of several which impact the reliability of his
`
`opinions and undermine Patent Owner’s own positions. Paper 21 at 2. Thus,
`
`exclusion of Mr. Cook’s improper redirect testimony is required to bar Patent
`
`Owner from relying on (either at oral argument or later) inherently unreliable
`
`testimony.
`
`For the convenience of Mr. Cook and the parties, Mr. Cook’s deposition was
`
`held over three days, to cover his declarations on five patents in five separate IPRs.
`
`See Ex. 1054 at 509. Patent Owner’s counsel initially began by questioning Mr.
`
`Cook about the priority date and filing dates of the ’077 patent. Ex. 1054 at 743:6–
`
`12. Mr. Cook insisted that the filing date and the priority date for the ’077 patent
`
`were both in 1990 (Ex. 1054 at 743:16–744:18) because Patent Owner told Mr.
`
`Cook that was the priority date when Mr. Cook wrote his expert report. See Ex.
`
`2029 at ¶28. But Mr. Cook’s use of that date was harmful to Patent Owner, as
`
`Patent Owner had inconsistently argued in its Preliminary Response that the
`
`priority date for the ’077 patent was in 1987 (see Paper 7 (Prelim. Resp.) at 18–
`
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`U.S. Patent No. 5,255,313
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`25).1 Thus, after Patent Owner’s counsel failed to obtain the desired identification
`
`of the priority date—1987—from Mr. Cook, Patent Owner’s counsel simply told
`
`Mr. Cook what answer to give. See Ex. 1054 at 744:20–25. Mr. Cook dutifully
`
`parroted the answer Patent Owner’s counsel requested (see Ex. 1054 at 745:4–8),
`
`despite disagreeing with the premise of the question (that the priority date of the
`
`’077 patent was 1987) (Ex. 1054 at 743:16–744:18). Having learned from the
`
`leading questioning, Mr. Cook proceeded to give the same, “it doesn’t matter” type
`
`of testimony regarding three of the other patents at issue (the ’313, ’917, and ’761
`
`patents). See Ex. 1054 at 747:11–:16, 749:10–:11, 750:23–751:3.
`
`B.
`
`Analysis
`
`Mr. Cook’s redirect testimony in Ex. 1054 at 745:4–:8, 745:15–746:1,
`
`746:13–747:4, 747:11–:16, 747:22, 748:2, 749:10–:11, 749:17–:21, 750:23–751:3
`
`should be excluded for several reasons. First, Mr. Cook’s improper testimony was
`
`in response to leading, yes-or-no, questions, intended to cover-up an erroneous
`
`view by simply saying it had no impact. Testimony from a friendly witness given
`
`in response to leading questions is nothing more than attorney argument. See
`
`1 Whether or not the Darbee patent is entitled to its earliest claimed priority
`date is not relevant to this motion and need not be decided, since the point is that
`Mr. Cook’s proper direct and cross-examination testimony contradicts Patent
`Owner’s own position.
`
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`
`Waddington, 2011 U.S. Dist. LEXIS 86632 at *50. Patent Owner had plenty of
`
`opportunity to provide its attorney argument elsewhere.
`
`Second, Mr. Cook’s testimony is unreliable because it lacks foundation and
`
`amounts to speculation. See Fed. R. Evid. 702. Mr. Cook’s analysis that his
`
`erroneous view on the priority date had “no impact” was not supported by any
`
`analysis in his direct testimony. See generally, Ex. 2029. He cannot have had
`
`enough time to perform a reasoned analysis in the few minutes that Patent Owner’s
`
`counsel questioned him regarding the issue on redirect. Indeed, Mr. Cook could
`
`only provide speculative explanation along the lines of that he “didn’t see
`
`anything” that “would have affected” the analysis. See Ex. 1054 at 747:3–:4. It is
`
`not surprising that Mr. Cook was unable to identify or analyze any relevant facts—
`
`he was considering the issue for the first time, in response to leading questions, at
`
`the very end of a three day deposition that covered five patents in five separate
`
`IPRs.
`
`In sum, Mr. Cook’s improper redirect testimony on the priority date for the
`
`Darbee patent should be excluded as unreliable and as the result of improper
`
`leading questioning.
`
`V.
`
`Conclusion
`
`Petitioner respectfully requests exclusion of the following testimony
`
`provided by Mr. Cook: Ex. 1053 at 419:1–:2, 419:14–:15, 420:5–:21, 421:8–422:2,
`
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`422:9–:13, and Ex. 1054 at 745:4–:8, 745:15–746:1, 746:13–747:4, 747:11–:16,
`
`747:22, 748:2, 749:10–:11, 749:17–:21, 750:23–751:3.
`
`Date: July 20, 2015
`
`Respectfully submitted,
`
`/ Douglas A. Miro /
`Reg. No. 31,643
`OSTROLENK FABER LLP
`1180 Avenue of the Americas
`7th Floor
`New York, NY 10036
`(212) 382-0700
`Counsel for Petitioner
`
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`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):
`
`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
`GREENBURG TRAURIG, P.C.
`77 West Wacker Drive
`Suite 3100
`Chicago, IL 60101
`Maierse@gtlaw.com
`lukasj@gtlaw.com
`levinsteinm@gtlaw.com
`harmer@gtlaw.com
`chiipmail@gtlaw.com
`
`DATED: July 20, 2015
`
`/Jeannie Ngai /
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`7th Floor
`New York, NY 10036
`
`{01784777.1}
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