Petitioner’s Trial Presentation
`
`Inter Partes Reviews
`
`IPR2014 01102 01103 01104 & 01106IPR2014-01102, -01103, -01104 & -01106
`of the “Darbee Patents”
`5,228,077; 5,552,917; 5,414,761; 5,255,313
`
`Oral Hearing Aug. 19, 2015
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000001
`
`
`
`Inter Partes Reviews
`
`IPR2014 01102 01103 01104 & 01106IPR2014-01102, -01103, -01104 & -01106
`of the “Darbee Patents”
`5,228,077; 5,552,917; 5,414,761; 5,255,313
`
`Oral Hearing Aug. 19, 2015
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000001
`
`
`
`The Darbee Patents Claim Priority to the ‘810 Patent
`
`Th ‘917The ‘917 patent is a continuation t t i ti ti
`
`
`
`of the ‘810 patent
`
`
`
`
`
`The ‘077, ‘313, and ‘761 patents are
`continuation-in-part of the ‘810 patent
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000002
`
`
`
`Patent Owner Applied the Same Analysis to all the
`
`Darbee PatentsDarbee Patents
`
`
`
`The ‘917 patent will be
`
`dused as representative of f
`the issues for the three
`other Darbee patents
`
`(unless expressly shown(unless expressly shown
`otherwise).
`See Cook Deposition, Ex. 1053, e.g.,
`at 333:24-334:4 (re ‘077), 334:19-
`
`‘761 & ‘313) 403 24336 20 (336:20 (re ‘761 & ‘313), 403:24-
`
`404:5 (re ‘077), 406:16-25 (re ‘761),
`409:24-410:17 (re ‘313).
`
`Q. Okay. So to the extent we've
`had testimony on the term code
`
`data for the '917 patent, thatdata for the 917 patent, that
`would apply to the construction
`of code data for the '077 patent,
`correct? A. Yes.
`
`E 1053 t 333 24 334 4Ex. 1053 at 333:24-334:4
`
`Q. … To the extent we've had testimony about the Ciarcia reference and how
`it distinguishes from the '917 patent, that testimony would apply equally to
`
`tth '077the '077 patents, correct? A. Yes. t t? A Y
`
`
`
`Ex. 1053 at 403:24-404:5
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000003
`
`
`
`•
`
`•
`
`Representative Claim 1 of the ‘917 Patent
`1. A remote control comprising
`•
`input means including a set of keys or pushbuttons for
`inputting commands to the remote control,
`infrared signal output means for supplying an infrared
`signal to a controlled device including IR lamp driver
`circuitry,
`a central processing unit (CPU) coupled to said input
`means and to said signal output means,
`
`• memory means coupled to said CPU code data for• memory means coupled to said CPU, code data for
`generating infrared codes stored in said memory
`means, and
`two-way data coupling means coupled to said CPU
`
`
`tt lbliffor enabling at least one of instruction codes or of f i t ti d f
`
`
`
`
`
`
`
`infrared code data for generating infrared codes to be
`supplied from outside said remote control through said
`two-way data coupling means directly to said CPU for
`
`entr into said memor means to enable a ser of theentry into said memory means to enable a user of the
`remote control to operate a selected controlled
`device upon inputting commands to the remote
`control by depressing selected keys of the remote
`
`control and to be transmitted from said remotecontrol and to be transmitted from said remote
`control through said two-way data coupling means to a
`computer.
`
`Patent Owner
`argues that “code
`data” is missing
`g
`from the prior art
`
`(Ciarcia).( )
`
`‘917 POR at 13-15, Pet. Reply
`at 10 & 12, Ex. 1053 (Cook
`
`Dep.) at 361:25-362:7.p )
`
`•
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000004
`
`
`
`Code Data Was in the Prior Art
`
`The Darbee patents expressly describe that
`
`“code data” was in the prior artcode data was in the prior art.
`See Pet. Reply at 5 and ‘917 patent at 8:58-62.
`See also id. at FIG. 11 (which is a copy of FIG. 1 of 4,623,887 to Welles).
`
`“The code data for the infrared codes
`may be obtained from vendor
`information sheets and specifications,
`can be determined using the methods
`
`disclosed in U.S. Pat. Nos. 4,623,887 anddisclosed in U.S. Pat. Nos. 4,623,887 and
`4,626,848, or by the method disclosed
`herein.”
`
`t 8 58 62 (Ett‘917‘917 patent at 8:58-62. (Emphasis added.)h i dd d )
`
`
`
`
`
`
`
`
`
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000005
`
`
`
`Construction of “code data”
`Petitioner:
`Patent Owner:
`• “instructions and• instructions and
`
`
`• “data such as timing• data, such as timing
`
`timing information
`information, that are
`for generating an o ge e at g a
`
`
`used for generating used o ge e at g
`infrared signal”
`infrared codes”
`‘917 POR at 10.
`‘917 Pet. Reply at 5-6.
`
`• The parties agree that “code data” requires “timing
`
`information” altho gh the disp te hether this information isinformation”, although they dispute whether this information is
`used for infrared signals or infrared codes.
`
`• The parties dispute whether “code data” require “instructions.”p p q
`
`
`
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000006
`
`
`
`Timing Information of “Code Data”
`NOT Disputed in Prior Art
`“Ciarcia does perform
`some limited timing
`analysis … Ciarcia’s Master
`
`Controller … providesController … provides
`limited timing data …”
`See ‘917 POR at 14.
`
`Patent Owner does NOT dispute
`that the prior art (Ciarcia) has
`
`“timing information”.timing information .
`See Pet. Reply at 12.
`
`“Q. So Ciarcia discloses timing information, correct?
`A. Yes.
`Q. Ciarcia discloses downloading timing information, correct?
`A. That's right.
`Q. Ciarcia discloses downloading of that timing information to
`a battery-backed static RAM, correct?
`
`A Th t'A. That's correct.”t ”
`
`Ex. 1053 (Cook Dep.) at 357:11-358:13.
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000007
`
`
`
`“Code data” does not require instructions
`• Claims expressly recite
`“instruction codes” as an
`alternative to “code data.”
`See, e.g., claim 1 of the ‘917
`patent.
`• Claims also recite “IR
`
`lamp driver instructions”lamp driver instructions
`that are created using
`
`“code data”.code data .
`See, e.g., claim 13 of the ‘077
`patent.
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000008
`
`
`
`“Code data” does not require instructions
`
`• The specification also differentiates “code
`data” from “instructions.”
`See ‘917 Pet. Reply at 7-8.
`
`See ‘917 patent, e.g., at 7:41-44 & 59-66.
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000009
`
`
`
`Patent Owner improperly tries to add “instructions”
`from a preferred embodiment of learning IR codes
`• Patent Owner points to a preferred embodiment of
`“learning or acquiring code data for infrared codes” which is
`
`lonly one way to obtain “code data” according to the Darbeet bt i “ d d t ” di t th D b
`
`
`
`
`
`patents.
`‘917 Pet. Reply at 5.
`See also ‘917 Pat. at 8:59-9:22.
`• Patent Owner ignored
`
`the other embodiments ofthe other embodiments of
`“code data” in the specification.
`
`“Q. ... But your declaration does not discuss the types of code data that canQ. ... But your declaration does not discuss the types of code data that can
`
`be obtained from vendor information sheets and specifications …, correct?
`A. I don't discuss the source of any of the information.
`Q. Okay. And then your declaration does not discuss code data that can be
`
`d tdetermined using U.S. Patent No. 4,623,887 or 4,626,848 …, correct? i d i U S P t t N 4 623 887 4 626 848 t?
`
`
`
`
`
`A. Correct.”
`Ex. 1053 (Cook Dep.) at 322:2-14.
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000010
`
`
`
`Patent Owner improperly tries to add “instructions”
`from a preferred embodiment of learning IR codes
`
`
`
`• In that preferred learning a p e e ed ea g
`method, Patent Owner
`points specifically to 5
`steps:
`-- Step (c) as identifying
`
`“instructions”; andinstructions ; and
`-- Steps (d), (e), (f) and (i)
`as “timing information.”
`See 917 POR at 10-11 and Ex.
`2029 at ¶¶ 51-52.
`
`
`
`‘917 patent at 8:63 9:22‘917 patent at 8:63-9:22
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000011
`
`
`
`Patent Owner improperly tries to add “instructions”
`from a preferred embodiment of learning IR codes
`
`• Patent Owner also failed to consider other parts of
`
`the specification where “code data” is expresslythe specification where code data is expressly
`refers to timing information only, without any
`reference to “instructions” from the specific
`b diembodiment Patent Owner points to. t P t t O i t t
`
`
`
`
`See ‘917 Pet. Reply at 8.
`
`‘917 Patent at 1:56-65
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000012
`
`
`
`Patent Owner improperly tries to add “instructions”
`from a preferred embodiment of learning IR codes
`• During prosecution, Patent
`Owner expressly claimed the
`“the list of instructions” in
`the original ‘810 patent
`
`application, but those claims application, but those claims
`were restricted out by the
`PTO and subsequently
`
`canceled by Patent Ownercanceled by Patent Owner.
`See Pet. Reply at 9.
`
`See Ex. 1055 at pp. 104
`& 276& 276.
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000013
`
`
`
`Patent Owner’s construction improperly excludes
`
`preferred embodiments of IR codes p
`
`•
`
`• Patent Owner also points to FIG. 14 for
`
`support See 917 POR at 11 12 and Exsupport. See 917 POR at 11-12 and Ex.
`2029 at ¶¶ 53-54 .
`In FIG. 14, a carrier signal is generated.
`
`See ‘917 Pet. Reply at 9-10. See also theSee 917 Pet. Reply at 9 10. See also the
`‘917 patent at FIG. 14 at Step 4, and Ex.
`1063 at ¶¶ 23-26 & 43.
`The Darbee patents, however, also
`describe preferred IR modulation
`schemes that do not use such carrier
`signal and do not use the “instructions”
`Patent Owner points to.
`See ‘917 Pet. Reply at 9-10. See also the
`‘917 patent at 8:48-51 and FIG. 11i. See
`
`also Ex 1063 at ¶¶ 23-26 & 43also Ex. 1063 at ¶¶ 23 26 & 43.
`
`•
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000014
`
`
`
`No dispute that Ciarcia discloses the claimed
`“code data” under Petitioner’s constructioncode data under Petitioner s construction
`
`
`•
`
`•
`
`There is no dispute that Ciarcia discloses
`“code data” under Petitioner’s
`construction.
`See Pet. Reply at 12. See also Ciarcia at 114
`and Ex. 1053 (Cook Dep.) at 357:11-358:13 .
`Patent Owner did not differentiate Ciarcia
`on any other grounds. See ‘917 POR at 13-15,
`Ex. 1053 (Cook Dep.) at 361:25-362:7.
`
`“Q. Okay. So and focusing on code data, if
`we assume code data does not include
`instructions, …, you do not have any
`analysis as to whether or not Ciarcia then
`reads on the Darbee Patent, correct?
`
`A. I do not have any analysis.”A. I do not have any analysis.
`Ex. 1053 at 361:25-362:7
`
`“Q. So Ciarcia discloses timing
`
`information, correct?information, correct?
`A. Yes.
`Q. Ciarcia discloses downloading
`timing information, correct?
`A. That's right.
`Q. Ciarcia discloses downloading
`of that timing information to a
`battery-backed static RAM,
`correct?
`A. That's correct.”
`
`E 1053 (C k DEx. 1053 (Cook Dep.) at 357:11-) t 357 11
`358:13.
`
`
`
`
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000015
`
`
`
`Ciarcia discloses “code data” even under Patent
`
`Owner’s construction requiring “instructions”Owner s construction requiring instructions
`• Ciarcia discloses menus that
`can include “instructions”.
`See Ciarcia at 114, ‘917 Pet. Reply at 15-16,
`and Ex. 1063 at ¶¶ 29 & 51.
`• Ciarcia further discloses
`
`generating IR signals with thegenerating IR signals with the
`help of a “8254 programmable
`interval timer.”
`
`Ciarcia at 118-119, ‘917 Pet. Reply at 14-15,Ciarcia at 118 119, 917 Pet. Reply at 14 15,
`and Ex. 1063 at ¶¶49-50. See also Ex. 1053
`at 376:24-377:7.
`
`Ciarcia at 114
`
`
`
`Ciarcia at 118 119Ciarcia at 118-119
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000016
`
`
`
`•
`
`Using Hastreiter’s keyboard circuit in Ciarcia’s
`
`remote was obviousremote was obvious
`The Darbee patents have a “unique”
`keyboard circuit which was a known
`
`d idesign choice to minimize h i i i i
`
`
`
`
`connections according to Hastreiter .
`‘917 Pet. Reply at 17. See Darbee at 6:37-42
`and FIG. 9B and Hastreiter at 1:5-11 & 2:43-51
`and FIG.1. Ex. 1063 at ¶¶ 35-39.
`• Under cross examination, Mr. Cook
`admitted that Ciarcia is in a field
`related to Hastreiter.
`‘917 Pet. Reply at 17. Ex. 1053 at 427:18-24.
`• Ciarcia discloses a traditional
`
`
`k bkeyboard matrix which Hastreiterd t i hi h H t it
`
`
`
`teaches can be improved upon.
`‘917 Pet. Reply at 17-18. Ex. 1063 at ¶38.
`
`Hastreiter 1:5-11
`“Q. So would you agree that Ciarcia is
`in a field related to Hastreiter? …
`THE WITNESS: As I said, the field of
`microprocessor design, keypad design
`is inherently a field that people in
`remote controls are aware of.”
`Ex. 1053 at 427:18-24.
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000017
`
`
`
`
`
`No Evidence of Commercial SuccessNo Evidence of Commercial Success
`
`- No nexus between Harmony/Nevo
`sales and “code data”
`- UEI’s Licenses resulted from
`Litigation
`Licenses covered many other UEI
`patents
`Some licenses did not cover the
`Darbee patents
`
`-
`
`-
`
`Ex. 2034 (Logitech Harmony 650 Manual) at 1
`
`IPR2014-01102, -01103, -01104, & -01106 URC Exhibit: 1065 Page 000018
`
`
`
`CERTIFICATE OF SERVICE
`
`On the below date, I served the foregoing document on the following
`
`counsel of record via email (with counsel’s agreement):
`
`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
`
`DATED: August 17, 2015
`
`/Jeannie Ngai/
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`7th Floor
`New York, NY 10036
`
`CERTIFICATE OF FILING
`I hereby certify that the foregoing is being electronically filed with the
`
`USPTO on the date below.
`
`DATED: August 17, 2015.
`
`{01796276.1}
`
`By: /Jeannie Ngai/
`Jeannie Ngai
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