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
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`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
`August 5, 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
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`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
`August 5, 2015.
`
`By:
`
`/s/ Eric J. Maiers
`Eric J. Maiers
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`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
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`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
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`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
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`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
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 5,255,313
`
`The Board should grant Universal Electronics Inc.’s (“UEI” or “Patent
`
`Owner”) motion to exclude the Intel 8254 Programmable Interval Timer Datasheet
`
`(Ex. 1043, the “Datasheet”) and the portions of Universal Remote Control, Inc.’s
`
`(“URC” or “Petitioner”) Reply (Paper No. 20). The Datasheet and URC’s related
`
`arguments are irrelevant to these proceedings because the Board did not instituted
`
`inter partes review based upon any prior art combination that includes the
`
`Datasheet. Moreover, URC’s argument that the Datasheet constitutes extrinsic
`
`evidence to support the Ciarcia reference’s inherent disclosure is untimely.
`
`II.
`
`LEGAL STANDARD
`
`“To establish inherency, the extrinsic evidence must make clear that the
`
`missing descriptive matter is necessarily present in the thing described in the
`
`reference.” 3D-Matrix, Ltd. v. Menicon Co., Case IPR2014-00398, Paper No. 11
`
`at 6 (P.T.A.B. Aug. 1, 2014) (Ex. 2005) (quoting In re Robertson, 169 F.3d 743,
`
`745 (Fed. Cir. 1999)) (internal quotations omitted) (emphasis added). A showing
`
`of inherency requires more than mere “probabilities or possibilities.” 3D-Matrix,
`
`Case IPR2014-00398, Paper No. 11 at 6. The Board in 3-D Matrix found that the
`
`petitioner’s inherency analysis was conclusory and lacked persuasive detail
`
`because it did “not explain or support, with specific citations” why the feature at
`
`issue was inherently disclosed. Id. at 11.
`
`1
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`III. THE DATASHEET IS INADMISSIBLE UNDER FEDERAL RULES
`OF EVIDENCE 401 AND 402.
`
`Petitioner’s reliance upon the Datasheet is a thinly-veiled attempt to turn the
`
`two-reference, Ciarcia1 and Hastreiter2 obviousness ground on which the Board
`
`instituted inter partes review into what would effectively be a three-reference,
`
`Ciarcia-Hastreiter-Datasheet obviousness ground. The Board should dismiss
`
`Petitioner belated inherency arguments out of hand.
`
`At the outset, Petitioner concedes that Ciarcia does not incorporate the
`
`Datasheet by reference. (Paper No. 35 at 4 (“…incorporation by reference … is
`
`not at issue here. Whether the [D]atasheet was incorporated by reference into
`
`Ciarcia is an issue that is itself irrelevant.”).) Rather, Petitioner now argues for the
`
`first time that the Datasheet—a 21-page document—is evidence of the inherent
`
`disclosure of the 11-page Ciarcia reference.
`
`Petitioner’s inherency argument is untimely. The time for Petitioner to
`
`present evidence of Ciarcia’s disclosure—express or inherent—was in its original
`
`petition. § 42.23(b); see also Office Trial Practice Guide, 77 Fed Reg. 48756,
`
`48767 (August 14, 2012) (“While replies can help crystalize issues for decision, a
`
`reply that … belatedly presents evidence will not be considered and may be
`
`returned.”). Here, Petitioner did not argue in its petition that the disclosure of the
`
`
`1 Ex. 1007.
`2 Ex. 1006.
`
`2
`
`
`
`IPR2014-01106
`
`U.S. Patent No. 5,255,313
`
`Datasheet was inherent in the disclosure of Ciaria; the Datasheet was not even
`
`submitted with the petition. (See generally Paper No. 1.) Petitioner’s reply
`
`likewise did not raise any inherency argument with respect to the Datasheet. (See
`
`generally Paper No. 23.) Rather, Petitioner raised its inherency argument, for the
`
`first time, in its opposition to Patent Owner’s motion to exclude. In so doing,
`
`Petitioner has deprived Patent Owner of any meaningful opportunity of rebutting
`
`Petitioner’s inherency argument, including through briefs, through submission of
`
`expert testimony, and through cross-examination of Petitioner’s expert. Thus, the
`
`Board should disregard Petitioner’s inherency argument and exclude the Datasheet.
`
`Regardless of whether the Board deems Petitioner’s inherency argument to
`
`be timely, it should grant Patent Owner’s motion to exclude because Petitioner has
`
`not carried its burden of establishing that any aspect of the Datasheet upon which
`
`Petitioner relies is inherent in the disclosure of Ciarcia. Specifically, Petitioner has
`
`not provided any evidence in its petition, in its reply, or in any expert testimony
`
`that the relied-upon features of the Datasheet are necessarily present in Ciarcia,
`
`and thus the Datasheet is irrelevant. For this additional reason, the Board should
`
`grant Patent Owner’s motion to exclude.
`
`3
`
`
`
`IPR2014-01106
`
`IV. CONCLUSION
`
`U.S. Patent No. 5,255,313
`
`For all the foregoing reasons, the Datasheet (Ex. 1043) and the
`
`corresponding portion of URC’s Reply at pages 14 – 15 are not relevant and
`
`therefore inadmissible under the Federal Rules of Evidence.
`
`Date: August 5, 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
`
`4
`
`
`
`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:
`
`August 5, 2015
`
`/s/ Eric J. Maiers
`Eric J. Maiers
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