Applicant:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`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
`
`
`RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`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 this
`1st day of April 2015.
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`/s/ Eric J. Maiers
`Eric J. Maiers
`
`
`
`

`
`
`
`I.
`II.
`
`B.
`
`C.
`
`D.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 2
`A.
`“input means . . . for inputting commands into the remote control”
`(Claims 1, 2, and 20) ............................................................................. 4
`“infrared signal output means for supplying an infrared signal to a
`controlled device” (Claims 1, 2, and 20) ............................................... 6
`“data coupling means for periodically coupling said computer to said
`remote control for receiving from said computer memory said code
`data for creating appropriate IR lamp driver instructions … said data
`coupling means for coupling said remote control to said computer,
`directly, through a telephone line, through a modem and a telephone
`line, or through decoding means and a television set to receive a
`television signal picked up by the television set” (Claim 1) ................. 7
`“data coupling means including terminal means comprising a
`receiving port coupled to said CPU for enabling code data for creating
`appropriate IR lamp driver instructions … to be supplied from outside
`said remote control through said receiving port of said terminal means
`directly to said CPU for direct entry to said memory means”
`(Claim 2) ..............................................................................................14
`“coupling means for coupling said terminal means to a computer,
`directly, through a telephone line, through a modem and a telephone
`line, or through decoding means and a television set” (Claim 2) .....1 7
`“data coupling means for periodically coupling said computer to said
`remote control for receiving from said computer memory and
`inputting into said memory means of said remote control said code
`data for creating appropriate IR lamp driver instructions”
`(Claim 20) ..........................................................................................2 1
`“code data” ........................................................................................2 5
`
`E.
`
`F.
`
`G.
`
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S REMAINING
`GROUND FOR INVALIDITY ...................................................................2 8
`A. Neither Ciarcia nor Hastreiter Meet the “code data for creating
`appropriate IR lamp driver instructions for causing said infrared signal
`output means to emit infrared signals” Limitation ..............................29
`
`i
`
`

`
`
`
`C.
`
`B. One Having Ordinary Skill in the Art Would Not Have Been
`Motivated to Combine Ciarcia and Hastreiter ....................................31
`The Secondary Considerations of Non-Obviousness Overcome Any
`Finding that Claims 1, 2, and 20 of the ‘313 is Obvious ....................33
`Petitioner Failed to Identify All Real Parties in Interest such that its
`Petition is Deficient .............................................................................37
`IV. CONCLUSION ..............................................................................................42
`
`D.
`
`ii
`
`
`
`
`
`

`
`
`
`Federal Cases
`
`TABLE OF AUTHORITIES
`
`Cable Elec. Prods., Inc. v. Genmark, Inc.,
`
`770 F.2d 1015 (Fed. Cir. 1985)................................................................................................35
`
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`
`227 F.3d 1361 (Fed. Cir. 2000)................................................................................................34
`
`Gen. Elec. Co. v. U.S.,
`
`572 F.2d 745 (Ct. Cl. 1978) .......................................................................................................5
`
`Graham v. John Deere Co.,
`
`383 U.S. 1 (1966) .....................................................................................................................33
`
`Harris Corp. v. Federal Express Corp.,
`
`502 Fed. Appx. 957 (Fed. Cir. 2013) .......................................................................................34
`
`In re GPAC Inc.,
`
`57 F.3d 1573 (Fed. Cir. 1995)..................................................................................................35
`
`In re Rambus, Inc.,
`
`694 F.3d 42 (Fed. Cir. 2012) .....................................................................................................2
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999)..................................................................................................28
`
`
`J.T. Eaton & Co. v. Atlantic Paste & Glue Co.,
`
`106 F.3d 1563 (Fed. Cir. 1997)................................................................................................34
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................2
`
`RCA Corp. v. Applied Digital Data Sys., Inc.,
`
`730 F.2d 1440 (Fed. Cir. 1984)................................................................................................34
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`
`713 F.2d 1530 (Fed. Cir. 1983)................................................................................................34
`
`Taylor v. Sturgell,
`
`553 U.S. 880 (2008) .................................................................................................................37
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
`
`699 F.3d 1340 (Fed. Cir. 2012)................................................................................................34
`
`iii
`
`

`
`
`
`P.T.A.B. Decisions
`
`3D-Matrix, Ltd. v. Menicon Co.,
`IPR2014-00398, Paper No. 11 (P.T.A.B. Aug. 1, 2014) .........................................................28
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc.,
`IPR2013-00222, Paper No. 12 (P.T.A.B. Aug. 12, 2013) .......................................................31
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`IPR2013-00183, Paper No. 12 (P.T.A.B. July 31, 2013) ........................................................31
`
`Omron Oilfield & Marine, Inc. v. MD/TOTCO,
`IPR2013-00265, Paper No. 11 (P.T.A.B. Oct. 31, 2013) ........................................................34
`
`Panel Claw, Inc. v. Sunpower Corp.,
`
`
`
`IPR 2014-00388, Paper No. 10 (P.T.A.B. June 30, 2014) ........................................................2
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper No. 15 (P.T.A.B. Dec. 30, 2013) ........................................................31
`
`Federal Statutes
`
`35 U.S.C. § 112 ...................................................................................................................... passim
`
`Regulations
`
`37 C.F.R. § 42.120 ................................................................................................................. passim
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48, 759 (Aug. 14, 2012) .....................37
`
`iv
`
`

`
`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 Technology, 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.
`
`
`
`2001.
`
`
`2002.
`
`
`2003.
`
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`2004.
`
`
`2005.
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`
`2006.
`
`
`2007.
`
`
`2018.
`
`
`2019.
`
`
`2020.
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`
`
`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.)
`
`Ohsung Website Printout, available at
`http://www.ohsungec.com/02 affli/02 foreign/06.aspx.
`
`v
`
`

`
`
`
`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
`
`vi
`
`

`
`
`
`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.
`
`2040.
`
` Settlement Agreement
`
` Holdings Agreement
`
`2041. Excerpts of Logitech Annual Reports 2007 through 2014
`
`2042.
`
` Settlement Agreement
`
`2043. Nevo/Xsight Sales Data
`
`2044.
`
` Settlement Agreement
`
`2045-46.
`
`INTENTIONALLY SKIPPED
`
`2047.
`
`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
`
`2066. Redline of Proposed Protective Order
`
`vii
`
`

`
`Redacted Nevo/Xsight Sales Data
`
`Redacted UEI Upgradeable Sales Data
`
`Redacted UEI Licensing Royalties
`
`
`
`
`
`2067.
`
`2068.
`
`2069.
`
`
`
`viii
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`

`
`IPR2014-01106
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`
`
`U.S. Patent No. 5,255,313
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`Universal Electronics Inc. (“UEI” or “Patent Owner”) respectfully submits
`
`this Response in accordance with 37 C.F.R. § 42.120 to the Petition for Inter
`
`Partes Review of Claims 1, 2, 20 of U.S. Patent No. 5,255,313 (the ’313 Patent)
`
`filed by Universal Remote Control, Inc. (“URC” or “Petitioner”). UEI has timely
`
`filed its Response in accordance with the Board’s Scheduling Order. (Paper 10.)
`
`I.
`
`INTRODUCTION
`The Board denied-in-part URC’s Petition, instituting inter partes review
`
`proceedings on Claims 1, 2, and 20 of the’ 313 patent based on “Build a Trainable
`
`Infrared Master Controller,” by Steve Ciarcia, BYTE March 1987 at pp. 113-123
`
`(“Ciarcia”) (Ex. 1007) and U.S. Patent No. 4,667,181 to Hastreiter (“Hastreiter”)
`
`(Ex. 1006). The Board should affirm the validity of Claims 1, 2, and 20 of the
`
`‘313 patent because the Petition does not articulate sufficient reasons—and in
`
`some cases any reason—as to why one having ordinary skill in the art would have
`
`been motivated to combine the asserted references. As a further example, the
`
`Petition does not comply with 37 C.F.R. § 42.104(b)(4) as it fails to identify where
`
`each element recited in Claims 1, 2, and 20 of the ’313 Patent is found in the cited
`
`references. For these reasons, Petitioner has not met its burden to demonstrate that
`
`Claims 1, 2, and/or 20 are invalid in view of the combination of Ciarcia and
`
`Hastreiter, and the Board should affirm the validity of those claims.
`
`1
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`

`
`IPR2014-01106
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`
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`U.S. Patent No. 5,255,313
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`
`
`II. CLAIM CONSTRUCTION
`In an inter partes review over an expired patent, the Board’s claim
`
`interpretation is similar to that of a district court. See In re Rambus, Inc., 694 F.3d
`
`42, 46 (Fed. Cir. 2012). The meaning of a disputed claim term depends upon the
`
`claim language in which the disputed term appears, the specification, and the
`
`prosecution history, if in evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1312-
`
`17 (Fed. Cir. 2005) (en banc)).
`
`Petitioner did not provide a proposed construction for “decoding means” (in
`
`Claim 1) and “terminal means” (in Claim 2). The failure to provide a construction
`
`for all 35 U.S.C. § 112, ¶ 6 claim terms is fatal to a petition for inter partes review.
`
`See, e.g., Panel Claw, Inc. v. Sunpower Corp., IPR 2014-00388, Paper No. 10
`
`(P.T.A.B. June 30, 2014). Rather than propose construction for “decoding means”
`
`and “terminal means,” Petitioner simply incorporates those claim term into its
`
`proposed constructions for the corresponding “data coupling means” limitations.
`
`(Pet. at 14-17.) Nowhere in Petitioner’s discussion of “data coupling means,”
`
`however, does Petitioner offer a proposed construction for either “decoding
`
`means” or “terminal means” by identifying their functions or the structure that
`
`provide those functions. Accordingly, Petitioner has offered a construction for
`
`neither “decoding means” nor “terminal means,” such that the Board should
`
`2
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`

`
`IPR2014-01106
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`
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`U.S. Patent No. 5,255,313
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`decline to consider Petitioner’s ground for invalidity of Claims 1 and 2 of the ‘313
`
`patent.
`
`Petitioner argues that the following phrases from Claims 1, 2, and 20 should
`
`be construed:
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`
`(6)
`
`“input means . . . for inputting commands into the remote
`control” (Claims 1, 2, and 20);
`
`“infrared signal output means for supplying an infrared
`signal to a controlled device” (Claims 1, 2, and 20);
`
`“data coupling means for periodically coupling said
`computer to said remote control for receiving from said
`computer memory said code data for creating appropriate
`IR lamp driver instructions … said data coupling means
`for coupling said remote control to said computer,
`directly, through a telephone line, through a modem and
`a telephone line, or through decoding means and a
`television set to receive a television signal picked up by
`the television set” (Claim 1);
`
`terminal means
`including
`“data coupling means
`comprising a receiving port coupled to said CPU for
`enabling code data for creating appropriate IR lamp
`driver instructions … to be supplied from outside said
`remote control through said receiving port of said
`terminal means directly to said CPU for direct entry to
`said memory means” (Claim 2);
`
`“coupling means for coupling said terminal means to a
`computer, directly, through a telephone line, through a
`modem and a telephone line, or through decoding means
`and a television set” (Claim 2); and
`
`“data coupling means for periodically coupling said
`computer to said remote control for receiving from said
`computer memory and inputting into said memory means
`
`3
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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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`of said remote control said code data for creating
`appropriate IR lamp driver instructions” (Claim 20).
`
`(Pet. at 13 – 18.) Therefore, the Response will address each phrase proposed for
`
`construction in turn. The Response also contains Patent Owner’s proposed
`
`construction for “code data.”
`
`A.
`
`“input means . . . for inputting commands into the remote
`control” (Claims 1, 2, and 20)
`
`The parties agree that the claim term “input means … for inputting
`
`commands into the remote control” is a means-plus-function limitation pursuant to
`
`35 U.S.C. § 112, paragraph 6, and that the corresponding function is “inputting
`
`commands into the remote control.” However, the correct structure corresponding
`
`to that function should be construed as a set of keys, push buttons, or equivalents
`
`thereof that provide a signal to the CPU when activated so the CPU will know
`
`what function is to be carried out. (Ex. 2029, Declaration of Alex Cook (“Cook
`
`Decl.”) at ¶ 39.) For performing the function of “inputting commands into the
`
`remote control,” the ’313 Patent describes that “[t]he operating circuitry also
`
`includes several subcircuits. One of those subcircuits 62 (FIG. 9B) includes the
`
`keyboard 61 having pushbuttons 25, each of which is connected to a port 63 of the
`
`CPU 56 shown in FIG. 9B and can be referred to as the keyboard circuit 62.”
`
`(’313 Patent col.6 ll.57-61.) “When the CPU 56 determines which pushbutton 25
`
`4
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`has been depressed the CPU 56 will then know what function is to be carried out.”
`
`(’313 Patent col.8 ll.3-5.)
`
`Petitioner proposes a construction in which the structure is limited to “a set
`
`of keys or push buttons (25), shown in FIGS. 1-6 and expressly recited in the
`
`claims, a keyboard circuit (62), and CPU (56) programmed to scan row lines (121-
`
`128) as shown, e.g., in FIG. 9B and described in the specification, e.g., at 6:57-68
`
`and 7:50-8:12.” (Pet. at 13-14 (citing Bristow Decl. ¶ 31).) However, Petitioner’s
`
`construction is overly narrow, as it incorporates more structure than is necessary to
`
`perform the specified function. See Gen. Elec. Co. v. U.S., 572 F.2d 745, 776 (Ct.
`
`Cl. 1978) (refusing to incorporate elements into limitation from the specification
`
`not necessary for performing function); Cook Decl., ¶ 40. For example,
`
`Petitioner’s construction for “input means” includes the structure of a CPU, but
`
`Claims 1, 2, and 20 separately recite “a central processing unit (CPU) coupled to
`
`said input means and to said signal output means.” (‘313 Patent at col.22 ll. 54-56,
`
`col.23 ll.10-12, col.26 ll.10-12 (emphasis added).) Since these claims make clear
`
`that the “input means” is coupled to the CPU, it follows that the CPU does not
`
`form a part of the structure of the “input means.” (Cook Decl., ¶ 40.) Further,
`
`Petitioner has provided no explanation for why the specific keyboard circuit 62 or
`
`a CPU scanning row lines are necessary to providing the function of inputting
`
`commands to the remote control.
`
`5
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`Accordingly, “input means . . . for inputting commands into the remote
`
`control” should be construed as a set of keys, push buttons, or equivalents thereof
`
`that provide a signal to the CPU when activated so the CPU will know what
`
`function is to be carried out, for performing the function of inputting commands
`
`into the remote control. (Cook Decl., ¶¶ 39-41.)
`
`B.
`
`“infrared signal output means for supplying an infrared signal to
`a controlled device” (Claims 1, 2, and 20)
`
`Patent owner agrees that “infrared signal output means for supplying an
`
`infrared signal to a controlled device” is a means-plus-function limitation pursuant
`
`to 35 U.S.C. § 112, paragraph 6, that the function is “supplying an infrared signal
`
`to a controlled device,” and that the corresponding structure is IR lamp driver
`
`circuitry coupled to a CPU and one or more LEDs. However, Patent Owner
`
`disagrees with Petitioner’s proposed construction to the extent that it requires a
`
`specific number of LED or other specific aspects of patentee’s preferred
`
`embodiment(s) that are not necessary for supplying an infrared signal to a
`
`controlled device. (See Pet. at 14 (stating that the corresponding structure should
`
`be “IR lamp driver circuitry (expressly recited in claim) connected to CPU (56)
`
`and corresponding LEDs (1, 2, 3) as shown, e.g., in FIGS. 7 and 9B, and described
`
`in the specification, e.g., at 6:29-42 and 9:17-18”) (citing Bristow Decl. ¶ 32);
`
`Cook Decl., ¶¶ 41-42.)
`
`6
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`

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`IPR2014-01106
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`
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`U.S. Patent No. 5,255,313
`
`Accordingly, “infrared signal output means for supplying an infrared signal
`
`to a controlled device” should be construed as the structures of IR lamp driver
`
`circuitry coupled to a CPU and one or more LEDs, or equivalents thereof,
`
`performing the function of supplying an infrared signal to a controlled device.
`
`(Cook Decl., ¶¶ 41-42.)
`
`C.
`
`“data coupling means for periodically coupling said computer to
`said remote control for receiving from said computer memory
`said code data for creating appropriate IR lamp driver
`instructions … said data coupling means for coupling said remote
`control to said computer, directly, through a telephone line,
`through a modem and a telephone line, or through decoding
`means and a television set to receive a television signal picked up
`by the television set” (Claim 1)
`
`Patent owner agrees that “data coupling means for periodically coupling said
`
`computer to said remote control for receiving from said computer memory said
`
`code data for creating appropriate IR lamp driver instructions … said data coupling
`
`means for coupling said remote control to said computer, directly, through a
`
`telephone line, through a modem and a telephone line, or through decoding means
`
`and a television set to receive a television signal picked up by the television set” is
`
`a means-plus-function limitation pursuant to 35 U.S.C. § 112, paragraph 6, that the
`
`function is “periodically coupling the computer to the remote control for receiving
`
`from the computer memory the code data for creating appropriate IR lamp driver
`
`instructions, and coupling the remote control to the computer, (i) directly, (ii)
`
`through a telephone line, (iii) through a modem and a telephone line, or (iv)
`
`7
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`IPR2014-01106
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`
`
`U.S. Patent No. 5,255,313
`
`through decoding means and a television set to receive a television signal picked
`
`up by the televisions set,” and that the corresponding structure includes a terminal
`
`of a receiving port coupled to a port of the CPU as well as a cable for coupling the
`
`remote’s terminal to (i) a computer directly, (ii) a telephone line, (iii) a modem, or
`
`(iv) through a VBI decoder to a television set.
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`However, Patent Owner disagrees with Petitioner’s proposed construction to
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`the extent that it requires a specific aspects of patentee’s preferred embodiment(s)
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`that are not necessary for supplying an infrared signal to a controlled device.
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`(Cook Decl., ¶¶ 43-45.) For instance, the Petition states that the corresponding
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`structure should be limited to “ terminals (1-3) of a serial port … as shown, e.g., in
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`FIG. 9B and described in the specification, e.g., at 9:7-16 and 9:35-38,” but
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`provides no explanation as to why the data port should be limited to the specific
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`serial receiving port shown, much less the detailed arrangement described in the
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`cited portions of the specification and figures. (Pet. at 15 (citing Bristow Decl. ¶¶
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`33-34) (emphasis added).) Indeed, any data port is capable of enabling the receipt
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`receiving data, and the port need not be a serial port. (Cook Decl., ¶ 46.)
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`Further, the Petition states that the corresponding structure should be limited
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`to a serial receiving port that is “coupled directly to ports (112, 121) of the CPU
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`(56).” (Pet. at 15 (emphasis added).) However, the express language of Claim 1 is
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`“a receiving port coupled to said CPU,” i.e., without limiting the coupling to direct
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`coupling. Although the corresponding function is “enabling code data for creating
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`appropriate IR lamp driver instructions to be supplied from outside the remote
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`control through the receiving port of the terminal means directly to the CPU for
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`direct entry to the memory,” the reference to “directly” in that function refers to the
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`flow of the code data from the outside source to the CPU (as opposed to the
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`memory), and not the nature of the physical connections between the receiving port
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`and the CPU. (Cook Decl., ¶ 47.)
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`Moreover, the Petition includes in its statement of the corresponding
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`structure the language “as shown in (i) FIGS. 20-22, (ii) FIG. 26, (iii) FIGS. 23 and
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`24, and (iv) FIG. 25, respectively, and described in the specification at
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`corresponding parts at 19:39-21:53.” (Pet. at 15 (citing Bristow Decl. ¶¶ 33-34).)
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`Patent Owner disagrees with the Petition to the extent that the Petition suggests
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`that the structure of the “coupling means” must include the specific structures
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`shown in the example of Figures 20-22 for the connection to a computer directly,
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`the structure shown in the example of Figure 26 for the connection to a telephone
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`line, the structure shown in the example of Figures 23 and 24 for the connection to
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`a modem, or the structure shown in the example of Figure 25 for the connection to
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`a television set through a VBI decoder. (Cook Decl., ¶ 48.) The structures of
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`Figures 20-26 in the ’313 Patent are merely exemplary, as is the detailed
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`description spanning from column 19, line 39 through column 22, line 41. For
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`instance, “a cable 208” is shown as an exemplary coupling means in Figure 20,
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`whereas “a cable 202” is shown as an exemplary coupling means in Figure 10.
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`(’313 Patent, Fig- 10 & col_9 11-39 — col_l0. 1-4; id. at Fig- 20 & col_l9 11-39-
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`55.) Both Figure 10 and Figure 20 show structures that can serve as “data coupling
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`means” according to Claim 1, but the Petition ignores Figure 10 and the other
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`structure disclosed in the specification- (Cook Decl-, 1] 49-) Given that the
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`specification broadly discloses a cable in general as a data coupling means, there is
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`no basis to limit the data coupling means to, for example, a 9-pin serial cable.
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`Petitioner simply has not shown that any of those details are necessary to the
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`claimed function of “coupling the remote control to the computer, (i) directly, (ii)
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`through a telephone line, (iii) through a modem and a telephone line, or (iv)
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`through decoding means and a television set to receive a television signal picked
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`up by the televisions set.” The same applies to not limiting the structure to the
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`specific example structures identified in Figures 20-26 and their associated
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`descriptions in the specification, when any data cable is capable of performing the
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`claimed function.
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`Accordingly, the correct construction of “data coupling means for
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`periodically coupling said computer to said remote control for receiving from said
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`computer memory said code data for creating appropriate IR lamp driver
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`instructions … said data coupling means for coupling said remote control to said
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`computer, directly, through a telephone line, through a modem and a telephone
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`line, or through decoding means and a television set to receive a television signal
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`picked up by the television set” is a terminal of a receiving port coupled to a port
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`of the CPU and a cable for coupling the remote’s terminal to (i) a computer
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`directly, (ii) a telephone line, (iii) a modem, or (iv) through a VBI decoder to a
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`television set, or equivalents thereof, for performing the function of periodically
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`coupling the computer to the remote control for receiving from the computer
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`memory the code data for creating appropriate IR lamp driver instructions, and
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`coupling the remote control to the computer, (i) directly, (ii) through a telephone
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`line, (iii) through a modem and a telephone line, or (iv) through decoding means
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`and a television set to receive a television signal picked up by the televisions set.
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`(Cook Decl., ¶¶ 43-44.)
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`Finally, the Board should reject Petitioner’s claim construction argument
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`that the ’313 Patent does not disclose any structure for “periodically coupling said
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`computer to said remote control.” (Pet. at 15-16.) For one, the ’810 Patent to
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`which the ’313 Patent claims priority discloses periodically coupling the remote
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`control to a computer, as explained below in Section III.B. (See, e.g., ’810 Patent
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`col.8 ll.46-47 (referencing “infinite upgradability” for the remote control; Cook
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`Decl., ¶ 50.) Furthermore, the ’313 Patent also discloses using a cable to couple
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`the remote control to a computer as well as various data ports to attach the cable
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`from the computer to the remote control. (See, e.g., ’313 Patent col.2 ll.50-58
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`(explaining that the remote control can be periodically coupled to a computer);
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`Cook Decl., ¶ 50.) One of ordinary skill in the art would understand that a cable
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`(from the computer) may be attached and unattached, i.e., periodically coupled to
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`the remote control via a data port. (Cook Decl., ¶ 50.)
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`The Petition also claims that the ’313 Patent does not disclose any structure
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`“for receiving ‘code data for creating appropriate IR lamp driver instructions.”
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`(Pet. at 16.) The Petition goes on to say that the ’313 Patent includes no
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`description “of software that programs the CPU (56) for handling such ‘code
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`data’” such as a “description of software that programs the CPU (56) for handling
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`such ‘code data’ in particular.” (Id. (citing Bristow Decl. ¶ 35).) In the context of
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`the claim term that the Petition has identified, however, the “data coupling means”
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`allows the remote control to “receive[] from said computer memory said code data
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`for creating appropriate IR lamp driver instructions . . . .” (Pet. at 14 (quoting
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`Claim 1).) Thus the function at issue here involves receiving code data from the
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`computer memory—not creating IR lamp driver instructions. (Cook Decl., ¶ 55.)
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`To that end, the ’313 Patent makes clear to those having ordinary skill in the
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`art the structure that enables this function. (Cook Decl., ¶ 56.) For example, the
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`’313 Patent discloses a terminal of a receiving port coupled to a port of the CPU as
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`well as a cable with first and second connectors, one of which can be coupled to
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`the remote’s terminal. (’313 Patent col.9 ll.7-16, col.9 ll.39-59, col.19 ll.39-55, &
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`Figs. 10 & 20.) This exemplary structure and equivalents thereof can perform the
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`function of “receiving from said computer memory said code data for creating
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`appropriate IR lamp driver instructions.” (Cook Decl., ¶ 56.) Thus the Petition’s
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`discussion about software and the “handling” of code data is simply beside the
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`point.
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`D.
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`“data coupling means including terminal means comprising a
`receiving port coupled to said CPU for enabling code data for
`creating appropriate IR lamp driver instructions … to be
`supplied from outside said remote control through said receiving
`port of said terminal means directly to said CPU for direct entry
`to said memory means” (Claim 2)
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`Patent owner agrees that “data coupling means including terminal means
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`comprising a receiving po