`Universal Electronics Inc.
`
`IPR2014-01102 (USPN 5,228,077)
`IPR2014-01103 (USPN 5,552,917)
`IPR2014-01104 (USPN 5,414,761)
`IPR2014-01106 (USPN 5,255,313)
`
`Oral Hearing, August 19, 2015
`Judges Blankenship, Medley and Pettigrew
`
`Universal Electronics Exhibit 2072, Page 1
`Universal Remote Control v. Universal Electronics, Inc., Trial No. IPR2014-01106
`
`
`
`Overview
`
`Introduction to the Darbee Patents
`– USPN 5,228,077
`– USPN 5,255,313
`– USPN 5,552,917
`– USPN 5,414,761
`Lack of Motivation to Combine References
`Claim Construction
`Secondary Considerations of Non-Obviousness
`Real Party in Interest
`
`2
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`Universal Electronics Exhibit 2072, Page 2
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`
`
`
`Introduction to the Darbee Patents
`
`Remotely upgradeable universal remote controls
`Code data for controlling an appliance is downloaded to
`the remote through an input port
`
`(‘917 Patent, Ex. 1001, Fig. 20.)
`
`3
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`
`
`
`Representative Claim of the Darbee Patents
`
`A remote control comprising input means including a
`1.
`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 generating infrared codes
`stored in said memory means, and two-way data coupling
`means coupled to said CPU for enabling at least one of
`instruction codes or of 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 entry 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 remote control through said two-way
`data coupling means to a computer.
`(‘917 Patent, Ex. 1001, Claim 1.)
`
`4
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`
`
`
`Prior Art at Issue
`
`Ciarcia
`
`Hastreiter
`
`5
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`Universal Electronics Exhibit 2072, Page 5
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`
`
`
`Obviousness and Motivation to Combine: Law
`
`In assessing obviousness, one must:
`1. Determine the scope and content of the prior art;
`2. Ascertain the differences between the prior art;
`3. Resolve the level of ordinary skill in the pertinent art;
`and
`4. Consider secondary considerations of non-
`obviousness.
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
`17–18 (1966).
`
`6
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`Universal Electronics Exhibit 2072, Page 6
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`
`
`
`No Motivation to Combine Ciarcia and Hastreiter
`
`Petitioner has not articulated any motivation to
`combine
`Petitioner’s experts have not articulated any
`motivation to combine
`Ciarcia teaches away from any combination with
`Hastreiter
`
`7
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`Universal Electronics Exhibit 2072, Page 7
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`
`
`
`Petitioner’s Expert’s Only Statements on Combining
`Ciarcia with Hastreiter
`
`“Hastreiter teaches that its design is ‘for minimizing the required
`number of interconnections with a microprocessor or other apparatus
`with which a keyboard is used.’ Hastreiter at FIGS. 1, 2 and 1:5-11.
`Thus, skilled artisans at the time understood that Hastreiter's keyboard
`circuit can be used in Ciarcia's remote to minimize the connections to
`the microprocessor.”
`(IPR 2014-01103, Bristow Decl., Ex. 1007 ¶ 54; IPR 2014-01102, Ex.
`1009 ¶ 60; IPR 2014-01104, Ex. 1013 ¶ 72; IPR 2014-1106, Ex.
`1011 ¶ 74 (emphasis added).)
`
`“can be used” does not mean that one of ordinary skill in the art
`would actually be motivated to combine.
`
`8
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`
`
`
`Ciarcia Teaches Away from Any Combination with Hastreiter
`
`Hastreiter is concerned with reducing the number of
`interconnections between a keypad and a microprocessor
`– In Hastreiter, N interconnections permits up to
`
`(cid:1840)(cid:3400)(cid:4666)(cid:1840)(cid:3398)1(cid:4667) keys. (Hastreiter, Ex. 1004 at 5:42-45.)
`
`Interconnections Maximum # of Keys
`5
`20
`10
`90
`20
`380
`
`– The larger the keypad, the greater the benefit of
`Hastreiter’s design. (See, e.g. IPR 2014-01103, Cook
`Decl., Ex. 2029 ¶ 81.)
`
`9
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`
`
`Ciarcia Teaches Away from Any Combination with Hastreiter
`
`Ciarcia, on the other hand, teaches reducing the
`overall number of keys.
`Ciarcia’s keypad only has six buttons.
`
`(Ciarcia, Ex. 1005 at 1, 9.)
`
`10
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`
`
`
`Ciarcia Teaches Reducing the Overall Number of Keys
`
`Ciarcia considered a fixed matrix of keys to be a
`“major shortcoming” of known remote controls.
`(Ciarcia, Ex. 1005 at 1.)
`Ciarcia instead opted to design “something
`different.” (Id.)
`– A series of on-screen menus for selecting
`functions, with less keys (Id. at 2.)
`
`11
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`
`
`
`Ciarcia Has No Need for Hastreieter’s Keypad
`
`Ciarcia’s keypad circuit has unused pins that could
`support more interconnections:
`
`Ciarcia has pins to spare! (Ciarcia, Ex. 1005 at Fig. 1.)
`
`12
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`
`
`
`Petitioner’s Expert Concedes that Ciarcia Has
`Unused Pins and Could Support a Larger Keypad
`
`Q Do you see that the LS -- I'm sorry
`– the 74LS240 has an unused spare
`input pin?
`A Yes.
`Q That's pin 8?
`A That's right.
`Q And do you also see that the
`74LS240 has two spare, unused
`output pins?
`A Yes.
`Q And those are pins 3 and 5?
`A That's right.
`(Gafford Dep., Ex. 2045 at 73:18-74:2.)
`
`Q Ciarcia does not use all of the input
`pins of the 74LS240; correct?
`A That's correct.
`Q It also does not use all of the output
`pins of the 74LS240 chip; correct?
`A Correct.
`Q So it's possible for Ciarcia to have
`a keypad with at least one more column
`and two more rows -- correct? -- without
`-- let me restate that. It is possible for
`Ciarcia to have a keypad that requires
`one more row and two -- one more
`column and two more rows without
`requiring any additional circuitry
`beyond the 74LS240; is that correct?
`A Yes. With his particular selection
`of components, you could have more
`rows and columns.
`(Gafford Dep., Ex. 2045 at 75:8-22
`(emphasis added).)
`
`13
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`
`
`
`Ciarcia Would Have to be Altered to be
`Combined with Hastreiter
`
`Hastreiter’s keypad must be connected to a processor
`with bidirectional input/output ports:
`“The keyboard can be connected directly to any
`suitable data processor which has bidirectional
`input/output ports.”
`(Hastreiter, Ex. 1004 at 4:15-17.)
`Ciarcia’s keypad connects to the 74LS240 chip.
`– Does not connect to a processor.
`– Does not have bidirectional input/output ports.
`(Gafford Dep., Ex. 2045 at 99:2-100:10.)
`
`14
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`Universal Electronics Exhibit 2072, Page 14
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`
`
`Claim Construction
`
`Key term: “code data”
`
`Term appears in each challenged claim of each
`of the Darbee Patents
`
`15
`
`Universal Electronics Exhibit 2072, Page 15
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`
`
`
`What is “code data”?
`
`“instructions and timing
`information for generating an
`infrared signal”
`
`(See, e.g., IPR 2014-01103, Patent Owner Response, Paper
`No. 14 at 10-12.)
`
`16
`
`Universal Electronics Exhibit 2072, Page 16
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`
`
`
`The Darbee Specifications Confirm That “code data”
`Comprises Both Instructions and Timing Data
`
`In the method for learning or acquiring code data for infrared codes
`disclosed herein, no counting of pulses is carried out. Instead the
`method involves the following steps:
`…
`(c) transforming the recorded point-in-time data into a list of
`instructions for generating a replica of the train of pulses;
`(d) timing the duration of a train of the pulses;
`(e) timing the period between trains of pulses;
`(f) associating a function key of the universal remote control
`device 10 with the time duration of the train of pulses and the list
`of instructions for generating a replica of the train of pulses;
`…
`(i) noting that repetitions are present; and
`(j) storing for use in a universal remote control device, the information
`acquired in steps (c), (d), (e), (f) and (i).
`(‘917 Patent, Ex. 1001 at 8:63-9:19.)
`
`17
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`Universal Electronics Exhibit 2072, Page 17
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`
`
`
`The Darbee Specifications Confirm That “code data”
`Comprises Both Instructions and Timing Data
`
`“The code data is stored in the RAM
`54 of the remote control device 10
`and the sequence of steps the
`circuitry 42 goes through to take the
`code data in the RAM 54 and
`generate the infrared code
`therefrom is set forth in this Figure
`[14].”
`(‘917 Patent, Ex. 1001 at 10:2-6, Fig. 14.)
`
`18
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`
`
`Petitioner’s Expert Concedes that Welles Uses
`Instructions to Transmit IR Signals
`
`Q Well, let's stick with Welles for a moment, and
`in paragraph 45 of your declaration, you identify
`the routines LA1, LB1, LC1 and LF1?
`A Yes.
`Q Are those examples of machine instructions?
`A They are.
`(Gafford Dep., Ex. 2045 at 64:15-20.)
`
`Q Okay. So in order to -- for those -- for those
`schemes in Figure 1 that require a carrier, the
`routines LA1, LB1, LC1, and LF1 are necessary in
`order to transmit the infrared codes to the
`recipient device; correct?
`A For all of those schemes except 1-I, they play
`a part in the transmission of information from the
`remote.
`(Gafford Dep., Ex. 2045 at 65:7-14.)
`
`Q So absent those machine instructions that
`control the "pause" and "on" time counts, would
`Welles be able to transmit the -- the IR code
`depicted in Figure 1-I?
`A Be careful. It's machine instructions -- the
`thing that -- machine instructions exert the control
`but only as a precise function of stored timing
`data, time span data. So it's a combination of
`instructions in the microprocessor, plus the
`timing data those instructions are working
`with that create the information pattern that
`goes out on the LED from Welles.
`Q So a combination of instructions and
`timing data in Welles are what drive the LED
`output?
`MR. KANG: Objection to form.
`THE WITNESS: Yes. They have to because
`Welles is a microprocessor and the instructions
`do everything in, I think, the sense in which you
`are using "machine instructions."
`(Gafford Dep., Ex. 2045 at 67:14-68-7 (emphasis
`added).)
`
`19
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`
`
`
`Ciarcia and Hastreiter Do Not Disclose “code data”
`
`Hastreiter does not discuss IR signals and therefore
`does not teach or suggest “code data.”
`– Petitioner does not allege that Hastreiter discloses
`“code data.”
`Ciarcia’s remote does not have or use “code data.”
`– When learning IR signals, Ciarcia does not break them
`down into instructions and timing data.
`– In Ciarcia, instructions are stored in a static EPROM,
`and menus and IR signals are stored in RAM.
`– Ciarcia does not download instructions from outside
`the remote.
`
`20
`
`Universal Electronics Exhibit 2072, Page 20
`Universal Remote Control v. Universal Electronics, Inc., Trial No. IPR2014-01106
`
`
`
`Ciarcia Does Not Disclose “code data”
`
`When learning IR signals, Ciarcia does not break them down into
`instructions and timing data:
`
`(Ciarcia, Ex. 1005 at 2 (emphasis added).)
`
`21
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`
`
`
`Ciarcia Does Not Disclose “code data”
`
`In Ciarcia, instructions are stored in a
`static EPROM, and menus and IR
`signals are stored in RAM:
`– “An Intel 8031 single-chip
`microprocessor running a
`program stored in a 2764
`EPROM directs the operation of
`the rest of the circuitry. (See
`photos 2 and 3 and figure 1.) The
`menus and IR signals are stored
`in a single 32K-byte battery-
`backed static RAM.” (Ciarcia, Ex.
`1005 at 2 (emphasis added).)
`– “The 8031’s system software is
`contained in a 2764 EPROM, and
`the LCD and IR data are
`contained in battery-backed
`RAM.” (Ciarcia, Ex. 1005 at 3
`(emphasis added).)
`
`EPROM
`- Stores instructions
`- Data cannot be
`modified
`
`RAM
`- Stores LCD
`and IR data
`- Data can be
`modified
`
`(Ciarcia, Ex. 1005 at 5.)
`
`22
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`Universal Electronics Exhibit 2072, Page 22
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`
`
`
`Ciarcia Does Not Disclose “code data”
`
`Ciarcia does not download instructions from outside
`the remote:
`“Ciarcia teaches the creation of menus on an IBM PC that
`can be downloaded to the Master Controller. Ciarcia
`states that these menus are stored in the RAM of the
`unit. Specifically, Ciarcia states: ‘An Intel 8031 single-chip
`microprocessor running a program stored in a 2764
`EPROM directs the operation of the rest of the
`circuitry.’ (Ciarcia, 2.) It is my opinion that Ciarcia does
`not teach downloading programming (computer
`instructions) to the Master Controller but instead teaches
`downloading menu data.”
`
`(See, e.g., IPR 2014-01103, Cook Decl., Ex. 2029 ¶ 59 (emphasis in original).)
`
`23
`
`Universal Electronics Exhibit 2072, Page 23
`Universal Remote Control v. Universal Electronics, Inc., Trial No. IPR2014-01106
`
`
`
`Ciarcia Does Not Disclose “code data”
`
`Ciarcia does not download instructions from outside the
`remote:
`
`(Ciarcia, Ex. 1005 at 2 (emphasis
`added).)
`
`24
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`Universal Electronics Exhibit 2072, Page 24
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`
`
`
`The Intel 8254 Chip Does Not Use Instructions
`
`Q. And writing a control word is the software programming of the 8254 referred to on
`the first page of the data sheet, correct?
`A. No. The 8254 does not have software programming. It's a peripheral device in
`that series of products by Intel. That's just a timer. The control words define how the
`hardware works with how the timer works, whether it interrupts correctly, how long it
`times, those kinds of things. It is not software that runs on the 8254.
`(Cook Dep., Exs. 1052-54 at 372:15-373:2.)
`
`Q. So in the 8254, there is an instruction sequence, it just not need to be special,
`correct?
`A. So you're conflating two ideas of programming and instructions. Where I talk
`about in Paragraph 59, computer instructions, that is the software that runs on the 8031.
`The 8254 does not have software that runs. It is programable [sic.] in the sense that
`it's not a fixed timer. Timing can be changed. Some of the operation can be changed in
`the way it does timing. Anybody from that period of time, from, say, mid '85, '86, through
`mid '90s, would have been accustomed to designing computer circuits using a CPU and
`peripheral chips made by either the same company or different companies that added
`capability to that. This is a peripheral chip that goes with another device.
`(Cook Dep., Exs. 1052-54 at 375:23-376:17.)
`
`25
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`Universal Electronics Exhibit 2072, Page 25
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`
`
`
`Secondary Considerations of Nonobviousness
`
`Law
`– Generally
`– Nexus and Commercial Success
`– Licensing / Commercial Acquiescence
`– Burdens
`The Inventions of the Instituted Claims of the Darbee Patents
`Licensing of the Darbee Patents and Commercial Acquiescence
`The Commercial Success of the Darbee Patents
`Petitioner Fails to Rebut and Petitioner’s Expert Fails to
`Address the Secondary Considerations of Nonobviousness
`
`26
`
`Universal Electronics Exhibit 2072, Page 26
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`
`
`
`Secondary Considerations of Nonobviousness:
`Law
`
`“Such secondary considerations as commercial success, long felt but unsolved
`needs, failure of others, etc., might be utilized to give light to the circumstances
`surrounding the origin of the subject matter sought to be patented.” Graham v.
`John Deere Co., 383 U.S. 1, 17-18 (1966).
`“A prima facie case of nexus is established when the patentee shows both that
`there is commercial success, and that
`the product
`that
`is commercially
`successful is the invention disclosed and claimed in the patent.” Omron
`Oilfield & Marine, Inc. v. MD/TOTCO, IPR 2013-00265, Paper No. 11 at 14
`(P.T.A.B. Oct. 31, 2013) (citing In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir.
`1995)) (emphasis added).
`“Testimony that a product was successful due to the patented features
`supports a finding of nexus.”
`Id. (citing Power Integrations, Inc. v. Fairchild
`Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed. Cir. 2013)) (emphasis
`added).
`
`“[The district court] also based his conclusion of non-obviousness on . . . the
`commercial acquiescence of competitors, evidenced by RCA’s extensive
`licensing of the invention.” RCA Corp. v. Applied Digital Data Sys., Inc., 730
`F.2d 1440, 1448 (Fed. Cir. 1984) (emphasis added).
`
`•
`
`•
`
`•
`
`27
`
`Universal Electronics Exhibit 2072, Page 27
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`
`
`
`Secondary Considerations of Nonobviousness:
`Law Regarding Burdens
`
`“Petitioner does not rebut any of this evidence. This lack
`of a rebuttal serves to bolster the case for commercial
`success.” Omron Oilfield & Marine, Inc. v. MD/TOTCO,
`IPR 2013-00265, Paper No. 11 at 14 (P.T.A.B. Oct. 31,
`2013)(citing Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d
`1294, 1310-11 (Fed. Cir. 2010)) (emphasis added).
`
`28
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`
`
`
`Secondary Considerations of Nonobviousness: The
`Inventions of the Darbee Patents (Patent Owner’s Expert)
`
`“The [Darbee Patents] disclose[] a remote control system that includes
`an upgradeable universal
`remote control and a system for
`transmitting data to the upgradeable universal remote. . . . In the
`described upgradeable remote of the [Darbee Patents], the contents
`of all memory can be changed.” (See, e.g., IPR 2014-01103, Cook
`Decl., Ex. 2029 ¶¶ 33, 38.)
`
`29
`
`Universal Electronics Exhibit 2072, Page 29
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`
`
`
`Secondary Considerations of Nonobviousness:
`The Inventions of the Darbee Patents (Petitioner)
`
`“The [Darbee Patents] teach[] two ways for loading instructions and
`data into the RAM. . . . In this way, the programming computer, through
`the remote controller, can update the code data and
`the CPU of
`instructions in the remote’s RAM.” (IPR 2014-01103, Bristow Decl., Ex.
`1007 ¶¶ 24, 26; IPR 2014-01102, Bristow Decl., Ex. 1009 ¶¶ 24, 26;
`IPR 2014-01106, Bristow Decl., Ex. 1011 ¶¶ 24, 26; IPR 2014-01104,
`Bristow Decl., Ex. 1013 ¶¶ 24, 26.)
`loading instructions and data into
`teach[]
`“The [Darbee Patents]
`RAM using an RS-232 connection . . . In this way, the programming
`computer, through the CPU of the remote controller, can update the
`code data and instructions in the remote’s RAM.” (Gafford Decl., Ex.
`1063 ¶ 34.)
`“The [Darbee Patents] disclose[] a universal remote control.” (IPR
`2014-01103, Petition, Paper No. 1 at 8; IPR 2014-01102, Petition,
`Paper No. 1 at 8; IPR 2014-01104, Petition, Paper No. 1 at 8; IPR
`2014-1106, Petition, Paper No. 1 at 8.)
`
`30
`
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`
`
`
`Secondary Considerations of Nonobviousness: Licensing of
`the Darbee Patents and Commercial Acquiescence—Logitech
`
`Petitioner and its expert assert that the inventions of the Darbee
`Patents are universal remote controls that can upload and download
`information:
`“The [Darbee Patents] disclose[] a universal remote control.”
`(IPR
`2014-01103, Petition, Paper No. 1 at 8;
`IPR 2014-01102, Petition,
`Paper No. 1 at 8; IPR 2014-01104, Petition, Paper No. 1 at 8; IPR
`2014-1106, Petition, Paper No. 1 at 8.)
`loading instructions and data into
`“The [Darbee Patents]
`teach[]
`RAM using an RS-232 connection . . . In this way, the programming
`computer, through the CPU of the remote controller, can update the
`code data and instructions in the remote’s RAM.” (Gafford Decl., Ex.
`1063 ¶ 34.)
`
`32
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`
`
`
`Secondary Considerations of Nonobviousness:
`The Commercial Success of the Darbee Patents
`
`Licensee Logitech has been the market leader in consumer aftermarket
`remote controls since 2007. (Id. ¶ 26.)
`Since 2007 sales of Licensee Logitech’s remote controls have accounted for
`more than approximately $100 million in worldwide, annual sales.
`(Id.; See
`also Ex. 2041.) A considerable portion of those remote controls are covered by
`the Darbee Patents. (Id., Ex. 2031 ¶ 1.6 (First license); Exs. 2032-2038 (Second
`license).)
`
`UEI is the market leader in original equipment manufacturing of remote controls
`for cable and satellite television providers and has generated approximately
`$1.6 billion in gross worldwide sales of remote controls covered by the
`Darbee Patents to cable television providers from 2000 to 2013. (Ammari Decl.,
`Ex. 2030 ¶¶ 30-31; See also Ex. 2048.)
`
`UEI’s Nevo remote controls for custom installation are covered by the Darbee
`Patents and realized approximately $17 million in sales from 2005 to 2010.
`(Id. ¶ 32; See also Ex. 2043.)
`
`33
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`
`
`
`Secondary Considerations of Nonobviousness:
`The Commercial Success of the Darbee Patents—Logitech Products
`
`Mr. Ammari testified that the Logitech Harmony remote control products are covered by the
`Darbee Patents.
`(Ammari Decl., Ex. 2030 ¶¶ 18-27; See also, e.g., Ex. 1050 at 235-36,
`Ex. 1051 at 290, 309.)
`
`During the patent infringement lawsuit that culminated in the second Logitech license, UEI
`and its attorneys served claim charts pursuant to the N.D. Cal. local patent rules that show
`on an element-by-element basis that the Logitech Harmony remotes are covered by the
`Darbee Patents. (See, e.g.,
`IPR 2014-01103, Ex. 2032 at 30 (“Update your remote Once
`you’ve added your devices and your Activities, it’s time to update the information to
`your remote. 1. Make sure your remote is connected to your computer.”)
`
`Logitech’s manuals show that the Logitech Harmony remotes are covered by the Darbee
`Patents. (See Exs. 2034-2038.)
`Each of the above, alone, is evidence of nexus, i.e., that the commercially
`successful Logitech Products are covered by the Darbee Patents
`
`34
`
`Universal Electronics Exhibit 2072, Page 33
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`
`
`
`Secondary Considerations of Nonobviousness:
`The Commercial Success of the Darbee Patents—UEI Products
`
`Mr. Ammari testified that the remote control products UEI provides to
`cable and satellite providers are upgradeable, covered by the Darbee
`Patents, and that UEI is the market leader in that space.
`(Ammari
`Decl., Ex. 2030 ¶¶ 28-31; See also, e.g., Ex. 1050 at 202, Ex. 1051 at
`334.)
`
`Mr. Ammari testified that UEI’s Nevo-branded remote control products
`are upgradeable and covered by the Darbee Patents.
`(Id. ¶¶ 32, See
`also, e.g., Ex. 1051 at 335, 337, 339, 346.)
`Each of the above, alone, is evidence of nexus, i.e., that the
`commercially successful UEI Products are covered by the
`Darbee Patents
`
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`
`
`Secondary Considerations of Nonobviousness: Petitioner Fails to
`Rebut the Secondary Considerations of Nonobviousness
`
`•
`
`•
`
`“Once the patentee demonstrates a prima facie nexus, the burden
`of coming forward with evidence in rebuttal shifts to the
`challenger.” Omron Oilfield & Marine,
`Inc. v. MD/TOTCO,
`IPR
`2013-00265, Paper No. 11 at 14 (P.T.A.B. Oct. 31, 2013) (citing
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387,
`1393 (Fed. Cir. 1988)) (emphasis added).
`
`“Petitioner does not rebut any of this evidence. This lack of a
`rebuttal serves to bolster the case for commercial success.” Id.
`(citing Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310-11
`(Fed. Cir. 2010)) (emphasis added).
`
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`
`
`Secondary Considerations of Nonobviousness:
`Petitioner’s Expert Failed to Address the Secondary Considerations of
`Nonobviousness
`
`Despite stating that he considered Patent Owner’s responses
`regarding each of the Darbee Patents—which included evidence of
`secondary considerations of nonobviousness (see Gafford Decl., Ex.
`1063, Appendix B (citing Patent Owner’s April 1, 2015, responses))
`—Petitioner’s expert Mr. Gafford failed to address secondary
`considerations in his June 24, 2015, declarations.
`(See
`generally, Ex. 1063.)
`Petitioner's expert Mr. Gafford did not review Mr. Ammari’s
`declarations regarding secondary considerations or the exhibits
`cited in Mr. Ammari’s declarations. (See Gafford Decl., Ex. 1063,
`Appendix B.)
`
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`
`
`Secondary Considerations of Nonobviousness:
`Petitioner Fails to Rebut and Petitioner’s Expert Fails to Address the
`Secondary Considerations of Nonobviousness
`Petitioner fails to rebut that:
`
`– Logitech products are covered by the Darbee Patents;
`
`– The Logitech products charted in the litigation that culminated in the
`second Logitech license are covered by the Darbee Patents;
`– Logitech has been the market
`leader
`in consumer aftermarket
`remote controls since 2007;
`– Since 2007, sales of Logitech’s remote controls have accounted for
`more than approximately $100 million in worldwide, annual sales;
`(See, e.g., IPR 2014-01103, Petitioner’s Reply, Paper No. 20 at 19-22.)
`
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`
`
`
`Secondary Considerations of Nonobviousness:
`Petitioner Fails to Rebut and Petitioner’s Expert Fails to Address the
`Secondary Considerations of Nonobviousness
`Petitioner fails to rebut that:
`– UEI’s original equipment remote controls for cable and satellite
`television providers are covered by the Darbee Patents;
`– UEI is the market leader in original equipment manufacturing
`of remote controls for cable and satellite television providers
`and has generated approximately $1.6 billion in gross
`worldwide sales of remote controls from 2000 to 2013; and
`– UEI’s Nevo products for custom installation are covered by the
`Darbee Patents and realized approximately $17 million in
`sales from 2005 to 2010.
`(See, e.g., IPR 2014-01103, Petitioner’s Reply, Paper No. 20 at
`19-22.)
`
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`
`
`Real Party in Interest: Law
`
`A petition for inter partes review “may be considered only if … the
`petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2)
`(emphasis added).
`“A common consideration is whether the non-party exercised or
`could have exercised control over a party’s participation in a
`proceeding.” Trial Practice Guide, 77 Fed. Reg. 48,759 (Aug. 14,
`2012) (citing Taylor v. Sturgell, 553 U.S. 880, 895 (2008)) (emphasis
`added).
`The concept of control generally means that “it should be enough
`the nonparty has the actual measure of control or opportunity to
`control that might reasonably be expected between two formal
`coparties.” Trial Practice Guide, 77 Fed. Reg. 48,759 (citing Wright
`& Miller §4451) (emphasis added); See also Decision Denying
`Patent Owner’s Motion for Additional Discovery, Paper No. 13 at 5.
`
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`
`
`Real Party in Interest: Law
`
`“[T]he spirit of that formulation as to IPR . . . proceedings means
`that, at a general level, the ‘real party-in-interest’ is the party that
`desires review of the patent. Thus, the ‘real party-in-interest’ may be
`the petitioner itself, and/or it may be the real party or parties at
`whose behest the petition has been filed.” 77 Fed. Reg. 48,759
`(Aug. 14, 2012) (emphasis added).
`Ultimately, whether a non-party should have been named as a real
`party-in-interest is an equitable question that turns upon the fairness
`of applying the statutory estoppel provision against that non-party as
`a privy having a sufficiently close relationship to the party to which
`estoppel unquestionably applies. Id.
`
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`
`
`Real Party in Interest: Facts Supporting That
`Ohsung is a Real Party in Interest
`
`Ohsung makes all of URC’s remote control products. (See, e.g.,
`Ex. 2019 at 6, 17; Ex. 2050 ¶ 2.4.; Ex. 2017 at 1791:17-22.)
`
`Ohsung’s U.S. office is also URC’s office. On Ohsung’s website,
`Ohsung’s “American Office” is identified as “Ohsung Electronics
`U.S.A. New York Office, 500 Mamaroreck Ave., Suite 502, Harrison
`NY 10528” (see Ex. 2020)—which is URC’s principal office (see Ex.
`2028).
`
`Ohsung does not pay rent for its U.S. office. (Ex. 2022 ¶ 24.)
`
`URC’s CEO testified that URC and Ohsung have a “very close
`relationship.” (Ex. 2017 at 596:22-24.)
`
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`
`
`Real Party in Interest: Facts Supporting That
`Ohsung is a Real Party in Interest
`
`the
`URC and Ohsung were both sued for infringement of
`Darbee Patents in UEI v. URC and Ohsung, Case No. 13-cv-984
`(C.D. Cal.) (“URC 3”)
`
`Petitioner URC’s counsel is also Ohsung’s counsel in URC 3
`and the parties share the same counsel in URC 3. (See, e.g., Ex.
`2022 (Petitioner’s counsel signing Ohsung’s Answer); Ex. 2026
`(Petitioner’s counsel signing the joint stipulation to stay the case on
`behalf of Ohsung pending the IPRs)).
`
`URC and Ohsung made joint representations regarding the
`scope of a continued stay pending the IPRs and petitioner’s
`counsel signed on behalf of both URC and Ohsung.
`(See Ex.
`2027 at 3, 5.)
`
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`
`
`Real Party in Interest: Facts Supporting That
`Ohsung is a Real Party in Interest
`
`Mr. Jak You, an Ohsung employee, is also a URC employee.
`– In UEI v. URC, Case No. 12-cv-329 (C.D. Cal.) (“URC 2”), URC
`identified Mr. You in its initial disclosures as “URC’s director of
`engineering,” his contact address was listed as URC’s address, and
`he was to be contacted through counsel for URC. (Ex. 2018 at 9.)
`
`– URC subsequently amended its initial disclosures in URC 2 and
`identified Mr. You as an Ohsung employee at the same contact
`address and stated “Mr. You is Ohsung Electronics USA’s contact in
`the New York office.” (Ex. 2021 at 9 (emphasis added).)
`– Mr. You’s LinkedIn page identifies him as “VP at Universal Remote
`Control” and Mr. You has an email address with a
`“universalremote.com” extension. (Ex. 2023; Ex. 2020.)
`
`– In URC 2, Mr. You was designated by URC to testify on URC’s
`behalf. (Ex. 2023; Ex. 2025.)
`
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