`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`In re Patent of: Darbee
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`Universal Remote Control, Inc.
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`Patent No.: 5,255,313
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`Filed: Apr. 8, 1993
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`Issued: Oct. 19, 1993
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`v.
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`Universal Electronics, Inc.
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`Case No. IPR2014-01106
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`Assignee: Universal Electronics Inc.
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`Trial Paralegal: Cathy Underwood
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`Title: UNIVERSAL REMOTE
`CONTROL SYSTEM
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
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`OBSERVATION REGARDING CROSS-EXAMINATION OF THOMAS
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`GAFFORD
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`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on this 31st day of July, 2015.
`
`By: / Jeannie Ngai /
`Jeannie Ngai
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`Petitioner respectfully submits this Response to Patent Owner’s motion for
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`observation regarding cross-examination during the July 13, 2015, deposition of
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`Thomas Gafford. See Paper 32.
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`Observations #1 & #2
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`Patent Owner’s assertion that Mr. Gafford’s credibility is in question
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`because he used language from two paragraphs of Mr. Bristow’s declaration is
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`without any merit as shown by the testimony of Mr. Gafford in Ex. 2045, at 10:9–
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`15, 13:14–14:2, 19:14–20:2, 20:13–21:4 and 24:8–26:8. See also Ex. 1063 at ¶¶
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`15 & 18. Patent Owner omits citation to Ex. 2045 at 10:9–15, and 13:14–14:2,
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`wherein Mr. Gafford testified that he was retained in this case because Petitioner’s
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`original technical expert, Mr. Stephen Bristow, passed away after filing his
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`declaration with the Petition. Patent Owner also omits citation to Ex. 2045 at
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`19:14–20:2, wherein Mr. Gafford testified that he independently arrived at the
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`substance of the opinions expressed in his declaration.
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`Patent Owner has not challenged this testimony of Mr. Gafford but for
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`paragraph 15, which provided the relevant technological field, and paragraph 18,
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`which provided the level of ordinary skill in the art. Patent Owner, however, omits
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`citation to Ex. 2045 at 20:13–21:3 and 24:8–26:8, wherein Mr. Gafford testified
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`that he came up with the substance of those two paragraphs independent of Mr.
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`Bristow, but given that he substantially agreed with Mr. Bristow on the relevant
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`field and the level of skill, he saw no reason to perform “wordsmithing” of the
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`form of the opinion as written by Mr. Bristow. Ex. 1063 at ¶¶ 15 & 18.
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`Observations # 3, #4, #5, #6 & #7
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`Patent Owner’s assertion that Mr. Gafford lacks credibility and
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`qualifications because his education, employment, and experience did not involve
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`universal remote controls is without any merit as shown by the testimony of Mr.
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`Gafford in Ex. 2045 at 32:22–33:8 and 115:25–121:4. See also Ex. 1063, at ¶¶ 2–
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`9, 15–19 and Appendix A. Patent Owner omits citation to Ex. 2045, at 32:22–
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`33:8, wherein Mr. Gafford explains that “nobody gets a degree in remote controls”
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`and that all subject matter relevant to remote controls was in the curriculum he
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`took. Patent Owner also omits citation to Ex. 2045, at 115:25–121:4, wherein
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`Mr. Gafford explains that the relevant field of study is embedded microprocessor
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`systems and he has extensive experience in such embedded systems. Patent Owner
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`also omits citation to Ex. 1063, at ¶¶ 2–9, 15–19 and Appendix A, wherein Mr.
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`Gafford provides a declaration and his resume detailing his extensive experience
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`with embedded systems.
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`Observations # 8 and #9
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`Patent Owner’s assertion that Mr. Gafford contradicts his construction of
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`“code data” is without any merit as shown by Ex. 2045 at 60:13–61:20, 63:10–
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`64:14, 64:22–:24, and 109:20–110:25. First, Patent Owner points to Ex. 2045 at
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`64:15-20, 65:7-14, and 68:1–7, but nowhere in those sections is the term “code
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`data” discussed. Second, Patent Owner omits citation to Ex. 2045, at 63:10–64:14
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`and 64:22–:24, wherein Mr. Gafford explains that “machine instruction,” as Patent
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`Owner’s counsel used in his question, was a broad, general term and, in that sense,
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`“everything this device does it does in response to … executing some computer
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`instruction.” Id. at 63:15-17. Third, Patent Owner also omits citation to Ex. 2045
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`at 60:13–61:20, wherein Mr. Gafford explains that the specific reference he was
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`asked about relates to the carrier, which “carries the codes, but is not the codes.”
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`Id. at 61:7–20. Finally, Patent Owner omits citation to Ex. 2045, at 109:20–
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`110:25, wherein Mr. Gafford explains the interaction of the word “instruction”
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`with the claim term “code data” further.
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`Observation # 10
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`Patent Owner asserts that Mr. Gafford’s “admission” about Ciarcia’s unused
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`pins supports Mr. Cook’s position about the lack of motivation to reduce pin-count
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`in Ciarcia. But Mr. Cook has never expressed any opinion about motivation “to
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`reduce pin-count in Ciarcia.” Thus, this challenge is untimely, outside the scope of
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`all the papers, and should be disregarded. Second, this challenge is without any
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`merit as shown by Ex. 2045 at 102:19–104:12, wherein Mr. Gafford explains that
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`Ciarcia’s design is not optimized and one way to improve on it is to use
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`Hastreiter’s keyboard.
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`Observation #11
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`U.S. Patent No. 5,255,313
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`Patent Owner asserts that Mr. Gafford’s “admission” about menu
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`instructions playing no role in the transmission of infrared codes is somehow
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`relevant to the “code data” limitation. First, Patent Owner’s assertion that “code
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`data” requires instructions for the transmission of infrared codes is a new
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`argument unsupported by the record and is outside the scope of all the papers and
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`should be disregarded. Second, Mr. Gafford explained that menu instructions play
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`a role in the generation of infrared codes. Ex. 2045 at 80:18–:23. Finally, Patent
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`Owner omits citation to Ex. 2045 at 80:1–17 and 111:2–112:17, wherein Mr.
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`Gafford provides further details about the menu instructions.
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`Observation #12
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`Patent Owner for the first time challenges whether Ciarcia’s 74LS240 chip is
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`a “central processing unit” and has bidirectional ports, and asserts that this is
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`relevant to the motivation to combine Ciarcia with Hastreiter. Patent Owner has
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`presented no expert testimony or attorney argument to support this challenge, and
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`it is untimely, outside the scope of all of the papers, and thus should be
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`disregarded. Patent Owner also omits citation to Ex. 2045, at 100:24–104:12,
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`where Mr. Gafford explains that Ciarcia contains a processor with bidirectional I/O
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`ports and the 74LS240 chip’s circuit can also be modified to create bidirectional
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`ports.
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`Date: July 31, 2015
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`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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`CERTIFICATE OF SERVICE
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`On the below date, I served the foregoing document on the following
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`counsel of record via email (with counsel’s agreement):
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`Eric J. Maiers (maierse@gtlaw.com)
`James J. Lukas (lukasj@gtlaw.com)
`Matthew J. Levinstein (levinsteinm@gtlaw.com)
`Rob R. Harmer (harmer@gtlaw.com)
`GREENBURG TRAURIG, P.C.
`77 West Wacker Drive
`Suite 3100
`Chicago, IL 60101
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`DATED: July 31, 2015
`
`/ Jeannie Ngai /
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`7th Floor
`New York, NY 10036
`
`{01789961.1}