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
`
`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION
`OF THOMAS GAFFORD
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`21st day of July, 2015.
`
`By:
`
`/s/ Eric J. Maiers
`Eric J. Maiers
`
`
`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
`
`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION
`OF THOMAS GAFFORD
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`21st day of July, 2015.
`
`By:
`
`/s/ Eric J. Maiers
`Eric J. Maiers
`
`
`
`2001.
`
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`TABLE OF EXHIBITS
`
`3D-Matrix, Ltd. v. Menicon Co., IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014)
`
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)
`
`Research in Motion Corp. v. Wi-Lan USA Inc., IPR2013-00126, Paper
`No. 10 (P.T.A.B. June 20, 2013)
`
`OpenTV, Inc. v. Cisco Tech., Inc., IPR2013-00329, Paper 9 (P.T.A.B.
`Nov. 29, 2013)
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Paper No. 12 (P.T.A.B. Aug. 12, 2013)
`
`SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper No.
`15 (P.T.A.B. Dec. 30, 2013)
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Paper No. 12 (P.T.A.B. July 31, 2013)
`
`2008-2016. INTENTIONALLY SKIPPED
`
`2017.
`
`2018.
`
`2019.
`
`Trial Transcript from Universal Electronics, Inc. v. Universal Remote
`Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D. Cal.), Dkt. No. 398-1
`
`Universal Remote Control, Inc.’s (“URC’s”) Initial Disclosures from
`Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
`8:12-cv-00329-AG-JPR (C.D. Cal.)
`
`URC’s Response to UEI’s Interrogatory at No. 6 from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`2020.
`
`Ohsung Website Printout, available at
`http://www.ohsungec.com/02_affli/02_foreign/06.aspx.
`
`i
`
`
`
`2021.
`
`2022.
`
`2023.
`
`2024.
`
`2025.
`
`2026.
`
`2027.
`
`2028.
`
`2029.
`
`2030.
`
`2031.
`
`URC’s Amended Initial Disclosures from Universal Electronics, Inc.
`v. Universal Remote Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D.
`Cal.)
`
`Defendant Ohsung Electronics, USA, Inc.’s Answer to Second
`Amended Complaint, Dkt. No. 76, from 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.)
`
`LinkedIn Profile of Jak You, available at
`https://www.linkedin.com/pub/jak-you/92/8a5/6b.
`
`09/05/2013 M. Hurley Email to L. Kenneally
`
`Amended Notice of 30(b)(6) Deposition to URC from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`Joint Stipulation Staying Action Pending Petitions for Inter Partes
`Review of All Asserted Claims, Dkt. No. 87 from 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.)
`
`Joint Statement of the Parties Pursuant to Order Staying Action (ECF
`No. 88) and Joint Request to Continue Status Conference, Dkt. No.
`102 from 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.)
`
`URC NY Secretary of State, Division of Corporations, Entity
`Information Website Printout
`
`Declaration of Alex Cook
`
`Declaration of Ramzi Ammari
`
`June 28, 2004 Intrigue/Logitech Settlement Agreement
`
`ii
`
`
`
`2032.
`
`2033.
`
`Logitech Harmony Claim Charts
`
`July 1, 2012 Logitech Settlement Agreement
`
`2034. Logitech Harmony 650 Manual
`
`2035. Logitech Harmony 700 Manual
`
`2036. Logitech Harmony 900 Manual
`
`2037. Logitech Harmony One Manual
`
`2038. Logitech Harmony 1100 Manual
`
`2039. January 1, 2002 Contec Settlement Agreement
`
`2040. September 1, 2009 Contec Holdings Agreement
`
`2041. Excerpts of Logitech Annual Reports 2007 through 2014
`
`2042. January 1, 2007 RTI Settlement Agreement
`
`2043. Nevo/Xsight Sales Data
`
`2044. December 17, 2001 U.S. Electronics Settlement Agreement
`
`2045.
`
`2046.
`
`2047.
`
`Transcript of Deposition of Thomas Gafford
`
`INTENTIONALLY SKIPPED
`
`Omron Oilfield & Marine, Inc. v. MD/TOTCO, IPR2013-00265,
`Paper No. 11 (P.T.A.B. Oct. 31, 2013)
`
`2048. UEI Upgradeable Sales Data
`
`2049. UEI Licensing Royalties
`
`2050.
`
`November 1, 2004 URC Settlement Agreement
`
`2051-63.
`
`INTENTIONALLY SKIPPED
`
`2064. Redacted Declaration of Ramzi Ammari
`
`2065. Proposed Protective Order
`
`iii
`
`
`
`2066. Redline of Proposed Protective Order
`
`2067.
`
`2068.
`
`2069.
`
`Redacted Nevo/Xsight Sales Data
`
`Redacted UEI Upgradeable Sales Data
`
`Redacted UEI Licensing Royalties
`
`iv
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`Universal Electronics Inc. (“UEI” or “Patent Owner”) respectfully submits
`
`this motion for observation regarding cross-examination during the July 13, 2015,
`
`deposition of Thomas Gafford1, a reply declarant of Universal Remote Control,
`
`Inc. (“URC” or “Petitioner”). Patent Owner submits the following observations
`
`based on Mr. Gafford’s testimony.
`
`Observation #1
`
`In Ex. 2045, at 20:3-5 and 20:20-24, Mr. Gafford testified that he prepared
`
`paragraph 15 of his declaration (Exhibit 1063), but then conceded that paragraph
`
`15 of his declaration was word-for-word identical to paragraph 11 of the
`
`declaration of Petitioner’s prior expert, Stephen Bristow (Exhibit 1007). That
`
`testimony is relevant Mr. Gafford’s and his declaration’s credibility, because it
`
`calls into question the extent to which Mr. Gafford’s opinions are truly
`
`independent and the extent to which counsel for Petitioner wrote Mr. Gafford’s
`
`opinions for him.
`
`Observation #2
`
`In Ex. 2045, at 19:14-20:2 and 22:14-24:7, Mr. Gafford testified that he
`
`prepared “the content but not the form” of paragraph 18 of his declaration (Exhibit
`
`1063), but then conceded that the vast majority of paragraph 18 of his declaration
`
`was word-for-word identical to paragraph 13 of the declaration of Petitioner’s prior
`
`1 The transcript of Mr. Gafford’s cross-examination has been submitted herewith as Exhibit
`2045.
`
`1
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`expert, Stephen Bristow (Exhibit 1007). That testimony is relevant Mr. Gafford’s
`
`and his declaration’s credibility, because it calls into question the extent to which
`
`Mr. Gafford’s opinions are truly independent and the extent to which counsel for
`
`Petitioner wrote Mr. Gafford’s opinions for him.
`
`Observation #3
`
`In Ex. 2045, at 31:19-23, 33:9-34:18 and 20:20-24, Mr. Gafford testified that
`
`none of his undergraduate and post-graduate education involved universal remote
`
`controls. That testimony is relevant because it shows that Mr. Gafford lacks
`
`credibility and the qualifications to testify as a purported expert concerning patents
`
`involving universal remote controls.
`
`Observation #4
`
`In Ex. 2045, at 34:24-35:22 and 38:8-24, Mr. Gafford testified that none of
`
`his employment experience involved universal remote controls. That testimony is
`
`relevant because it shows that Mr. Gafford lacks credibility and the qualifications
`
`to testify as a purported expert concerning patents involving universal remote
`
`controls.
`
`Observation #5
`
`In Ex. 2045, at 39:19-41:24, Mr. Gafford testified that his “extensive
`
`experience” in remote controls, specifically, consists of working with non-
`
`universal Zenith and RCA remotes in the 1960s, owning and “programming” (i.e.,
`
`2
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`configuring) two models of universal remote controls for his home use, and
`
`consulting for two patent litigations in which non-universal remote controls were
`
`integrated into larger systems. That testimony is relevant because it shows that Mr.
`
`Gafford lacks credibility and the qualifications to testify as a purported expert
`
`concerning patents involving universal remote controls.
`
`Observation #6
`
`In Ex. 2045, at 45:5-46:10 and 54:8-14, Mr. Gafford admitted that he does
`
`not satisfy Petitioner’s prior expert, Mr. Bristow’s, alternate definition of a person
`
`of ordinary skill in the art and, concerning Mr. Bristow’s primary definition of one
`
`of ordinary skill in the art, admitted that he has had no formal training in universal
`
`remote controls, but then testified that he believes he meets Mr. Bristow’s
`
`requirement of “training in consumer electronics and remote control systems
`
`including at least two years of practical experience” because he has reviewed
`
`literature for two universal remote controls and use that literature to configure
`
`those remotes for his home use. That testimony is relevant because it shows that
`
`Mr. Gafford lacks credibility and the qualifications to testify as a purported expert
`
`concerning patents involving universal remote controls, most notably, because he
`
`does not satisfy Mr. Bristow’s definition of a person of ordinary skill in the art.
`
`3
`
`
`
`IPR2014-01106
`
`Observation #7
`
`U.S. Patent No. 5,255,313
`
`In Ex. 2045, at 54:8-23, Mr. Gafford testified that he has had no formal
`
`training in remote control systems and that he has no experience in designing
`
`remote controls, universal or otherwise. That testimony is relevant because it
`
`shows that Mr. Gafford lacks credibility and the qualifications to testify as a
`
`purported expert concerning patents involving universal remote controls.
`
`Observation #8
`
`In Ex. 2045, at 64:15-20 and 65:7-14, Mr. Gafford admitted that the LA1,
`
`LB1, LC1 and LF1 routines of the Welles patent (Exhibit 1061) are examples of
`
`machine instructions that are necessary to transmit infrared codes to a recipient
`
`device. That testimony is relevant because it contradicts Mr. Gafford’s opinion in
`
`¶ 42 of his declaration (Exhibit 1063) that the claim term “code data” does not
`
`require instructions.
`
`Observation #9
`
`In Ex. 2045, at 68:1-7, Mr. Gafford admitted that in the Welles patent
`
`(Exhibit 1061), a combination of instructions and timing data are necessary to
`
`drive LED output. That testimony is relevant because it contradicts Mr. Gafford’s
`
`opinion in ¶ 42 of his declaration (Exhibit 1063) that the claim term “code data”
`
`does not require instructions.
`
`4
`
`
`
`IPR2014-01106
`
`Observation #10
`
`U.S. Patent No. 5,255,313
`
`In Ex. 2045, at 72:3-23, 73:18-74:2 and 75:8-22, Mr. Gafford admitted that
`
`the keypad of Ciarcia is connected to an 74LS240 integrated circuit chip, that the
`
`74LS240 chip has an unused input pin and two unused output pins, and thus the
`
`circuit in Ciarcia a larger keypad with one more column and two more rows. That
`
`testimony is relevant because it supports Patent Owner’s and Mr. Cook’s position
`
`that one of ordinary skill in the art would not be motivated to reduce pin-count in
`
`Ciarcia, since the circuitry in Ciarcia has pins to spare, and therefore would not be
`
`motivated to combine Ciarcia with Hastreiter.
`
`Observation #11
`
`In Ex. 2045, at 80:18-81:2, Mr. Gafford admitted that the “menu
`
`instructions” of Ciarcia play no role in the transmission of infrared codes. That
`
`testimony is relevant because it means that menu instructions cannot satisfy the
`
`“code data” claim term.
`
`Observation #12
`
`In Ex. 2045, at 99:2-100:10, Mr. Gafford admitted that 74LS240 chip of
`
`Ciarcia is neither a processor nor does it have bidirectional ports. That testimony
`
`is relevant because if the 74LS240 is not a processor, it cannot be a “central
`
`processing unit” or a “CPU” in the context of the challenged claims, and because
`
`5
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`one of ordinary skill in the art would not be motivated to combine Ciarcia with
`
`Hastreiter, which requires that its keypad be connected to bidirectional ports.
`
`Observation #13
`
`In Ex. 2045, at 96:6-21, Mr. Gafford admitted that, aside from differing
`
`citations to the respective patents, the text of his declaration for the ‘313 patent is
`
`the same as that of his declaration for the ‘971, that he did not intend to have
`
`different opinions for the two patents, and that his testimony as to the ‘917 patent
`
`would apply equally to the ‘313 patent. That testimony is relevant because the
`
`testimony discussed above in Observations #1-12 was elicited in the context of the
`
`‘917 patent, but is equally applicable to the ‘313 patent.
`
`Date: July 21, 2015
`
`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
`
`6
`
`
`
`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
`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: (650) 565-7100
`pkang@sidley.com
`tchandler@sidley.com
`fpazmandi@sidley.com
`urc@sidley.com
`
`Date:
`
`July 21, 2015
`
`/s/ Eric J. Maiers
`Eric J. Maiers
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