`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
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`EXCLUDE EVIDENCE
`
`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 July
`31, 2015.
`
`By:
`
`/s/ Eric J. Maiers
`Eric J. Maiers
`
`
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`2001.
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`2002.
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`2003.
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`2004.
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`2005.
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`2006.
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`2007.
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`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
`
`
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`2021.
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`2022.
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`2023.
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`2024.
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`2025.
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`2026.
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`2027.
`
`2028.
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`2029.
`
`2030.
`
`2031.
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`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
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`
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`2032.
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`2033.
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`Logitech Harmony Claim Charts
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`July 1, 2012 Logitech Settlement Agreement
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`2034. Logitech Harmony 650 Manual
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`2035. Logitech Harmony 700 Manual
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`2036. Logitech Harmony 900 Manual
`
`2037. Logitech Harmony One Manual
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`2038. Logitech Harmony 1100 Manual
`
`2039. January 1, 2002 Contec Settlement Agreement
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`2040. September 1, 2009 Contec Holdings Agreement
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`2041. Excerpts of Logitech Annual Reports 2007 through 2014
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`2042. January 1, 2007 RTI Settlement Agreement
`
`2043. Nevo/Xsight Sales Data
`
`2044. December 17, 2001 U.S. Electronics Settlement Agreement
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`2045.
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`2046.
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`2047.
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`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.
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`November 1, 2004 URC Settlement Agreement
`
`2051-63.
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`INTENTIONALLY SKIPPED
`
`2064. Redacted Declaration of Ramzi Ammari
`
`2065. Proposed Protective Order
`
`iii
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`
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`IPR2014-01106
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`2066. Redline of Proposed Protective Order
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`2067.
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`2068.
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`2069.
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`Redacted Nevo/Xsight Sales Data
`
`Redacted UEI Upgradeable Sales Data
`
`Redacted UEI Licensing Royalties
`
`iv
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`
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`IPR2014-01106
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`I.
`
`INTRODUCTION
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`U.S. Patent No. 5,255,313
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`The Board should deny Petitioner’s Motion to Exclude (Paper No. 30) for
`
`the simple reason that it is conclusory and thus Petitioner has failed to meet its
`
`burden to show that any evidence is inadmissible. For example, with respect to
`
`Mr. Cook’s redirect examination, Petitioner has not identified a single, specific
`
`question that it believes was leading, nor has it provided any analysis as to why
`
`any question is purportedly leading. Further, in some instances, Petitioner’s
`
`objections were waived, untimely and/or inadequate.
`
`II.
`
`LEGAL STANDARDS
`
`A motion to exclude evidence must explain why the cited evidence is not
`
`admissible. Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`
`CBM2012-00002, Paper 66, at 61 (P.T.A.B. Jan. 23, 2014) (citing 77 Fed. Reg.
`
`48765, 48767 (Aug. 14, 2012)). The motion to exclude must also: (a) identify
`
`where in the record the objection was originally made; (b) identify where in the
`
`record the evidence sought to be excluded was relied upon by an opponent; (c)
`
`address objections to exhibits in numerical order; and (d) explain each objection.
`
`Id.
`
`III. MR. COOK’S CROSS-EXAMINATION TESTIMONY THAT THE
`CIARCIA REFERENCE LACKS THE CLAIMED “INPUT MEANS”
`SHOULD NOT BE EXCLUDED
`
`Petitioner asks the Board to exclude testimony that Patent Owner’s expert,
`
`Alex Cook, provided in response to Petitioner’s own questions seeking that very
`
`1
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`U.S. Patent No. 5,255,313
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`testimony. In essence, Petitioner wishes to have its cake and eat it too. It wants to
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`freely ask questions of a witness, but then it only wants the Board to consider the
`
`answers that are favorable to Petitioner’s case. Petitioner cannot have it both ways.
`
`Petitioner cannot now object, when it was Petitioner who opened the door.
`
`Petitioner waived any objection to Mr. Cook’s testimony that Ciarcia lacks
`
`the claimed “input means” when Petitioner directly and unequivocally sought to
`
`elicit that very testimony through the following question(s):
`
`Q. Okay. So Ciarcia, under your definition of input means,
`has an input means?
`A. Ciarcia -- You're asking me if Ciarcia has an input means
`-- You're asking if Ciarcia meets the requirements as I've defined them
`in the claim?
`Q. Yes.
`(Ex. 1053 at 418:18-25 (“Cook Dep.”).)
`
`Petitioner did not stop there; it continued to ask follow-up questions on the
`
`same topic, such as the following: “Q. All right. Ciarcia has buttons for
`
`inputting commands into the remote control, correct?” (Id. at 419:11-13.) In short,
`
`even if Mr. Cook’s testimony regarding the lack of an “input means” in Ciaria was
`
`outside the scope of his direct testimony, Petitioner waived that objection by
`
`asking questions that directly sought that testimony.1 Moreover, an objection that
`
`
`1 See People v. Burage, 23 Ill. 2d 280, 178 N.E.2d 389 (1961) (party who brings
`out inadmissible testimony has no right to have it excluded unless objectionable
`
`2
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`cross-examination testimony is outside the scope of the direct is not the cross-
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`examining party’s objection to make. Rather, a proper objection for the
`
`questioning party is that the testimony is not responsive to the question posed.
`
`However, petitioner has not, indeed cannot, allege that Mr. Cook’s testimony was
`
`non-responsive—again, it was directly responsive to Petitioner’s unambiguous
`
`questions. For that reason alone, the Board should deny Petitioner’s motion.
`
`The Board should also deny Petitioner’s motion to exclude Mr. Cook’s
`
`testimony on the absence of “input means” in Ciacia, because Petitioner did not
`
`properly and timely object to Mr. Cook’s testimony. Any objection to the content,
`
`form, or manner of taking the deposition, including the qualifications of the officer,
`
`is waived unless made on the record during the deposition. 37 C.F.R. §
`
`42.53(f)(8). In the nearly five pages of testimony that Petitioner elicited and is
`
`now seeking to exclude, the only statement by Mr. Kang, counsel for Petitioner,
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`that could arguably be considered an “objection” is the following:
`
`MR. KANG: Just for the record, I'll move to strike any
`testimony on the issue of whether or not Ciarcia satisfies the input
`means of the '917 claims.
`MR. MAIERS: We'll contend you opened the door.
`
`
`material is contained in answer that is not responsive); see also State v. Haselhorst,
`1984, 353 N.W.2d 7, 218 Neb. 233 (where the defendant's counsel asked a
`dangerous question, he could not complain that motion to strike unfavorable
`answer was denied).
`
`3
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`(Cook Dep. at 423:1-6.) However, the above statement by counsel for
`
`Petitioner does not provide any basis, much less a valid one, for excluding
`
`Mr. Cook’s testimony. Rather, counsel merely stated he would move to
`
`strike testimony on a certain topic. That, in and of itself, was insufficient to
`
`put Patent Owner on notice of the basis of Petitioner’s objection. Moreover,
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`even if the above statement was a proper objection—which it was not—the
`
`statement was untimely, as it was made as many as 10 questions (and five
`
`transcript pages) after those that prompted the testimony that Petitioner now
`
`seeks to exclude. Any attempt to object that Petitioner may have made after
`
`the conclusion of Mr. Cook’s testimony is likewise untimely. 37 C.F.R. §
`
`42.53(f)(8).
`
`For all the above reasons, the Board should not exclude Mr. Cook’s
`
`testimony that Ciarcia lacks the claimed “input means.”
`
`IV. THE BOARD SHOULD NOT EXCLUDE MR. COOK’S TESTIMONY
`ON REDIRECT
`Simply put, Petitioner has not met its burden of showing that any questions
`
`posed to Mr. Cook during his redirect examination were leading and should be
`
`excluded. Petitioner’s “Analysis,” which barely spans more than a single page,
`
`does not identify a single, specific question that Petitioner believes was leading,
`
`much less analyze whether any question was, in fact, leading. Petitioner does not
`
`even cite any legal authority for what constitutes a leading question. And with
`
`4
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`good reason—none of the questions posed to Mr. Cook during his redirect
`
`examination were improper leading questions.
`
`Leading questions should not be used on direct examination except as to
`
`preliminary matters. FED. R. EVID. 611(c).2 A leading question is one that
`
`suggests to the witness the answer desired by the examiner.3 McCormick On Evid.
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`§ 6 (7th ed.). None of the questions posed to Mr. Cook on redirect gave him any
`
`indication as to the desired answer. By way of example, the question, “And do you
`
`have an understanding of what the priority date of the '313 patent is?” clearly does
`
`not suggest any preferred answer to the witness. (See Ex. 1054 at 746:9-11.) Yet
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`that is precisely the type of question that petitioner is seeking to exclude as leading.
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`Petitioner simply has not met its burden of showing that any of the questions
`
`posed to Mr. Cook on redirect were leading, that he lacked foundation, or that he
`
`was speculating. Accordingly, the Board should not exclude Mr. Cook’s redirect
`
`testimony.
`
`
`2 The Federal Rules of Evidence apply to inter partes review proceedings, unless
`otherwise provided in the regulations governing inter partes reviews. 37 C.F.R. §
`42.62(a).
`3 Contrary to Petitioner’s suggestion a question is not leading simply by virtue of
`the fact that its response may be a “yes” or a “no.” To be leading, a question must
`go further and actually suggest the answer to the witness.
`
`5
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`IPR2014-01106
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`V.
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`CONCLUSION
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`U.S. Patent No. 5,255,313
`
`For all the foregoing reasons, the Board should deny Petitioner’s Motiont o
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`Exclude in its entirety.
`
`Date: July 31, 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
`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
`
`Date:
`
`July 31, 2015
`
`/s/ Eric J. Maiers
`Eric J. Maiers