`
`
`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
`
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`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
`8th day of October 2014.
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`/s/ Cynthia Tapia
`Cynthia Tapia
`
`

`

`
`
`B.
`
`C.
`
`D.
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 3
`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) ....... 16
`“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) ............................................................................................ 20
`III. THE PETITION DOES NOT MEET THE STATUTORY
`REQUIREMENT OF 35 U.S.C. § 314(a) ..................................................... 24
`A.
`The Petition Fails to Establish that CS-232 Is Prior Art to the ’313
`Patent Under 35 U.S.C. § 102(b) ........................................................ 26
`Even If the CS-232 Manual Is a “Printed Publication,” It Is Not Prior
`Art to the ’313 Patent .......................................................................... 28
`
`E.
`
`F.
`
`B.
`
`i
`
`

`

`
`
`C.
`
`D.
`
`The Petition Fails to Identify Why One Having Ordinary Skill in the
`Art Would Have Been Motivated to Combine Wozniak with Either
`CS-232 or Hastreiter (Ground 1) ......................................................... 45
`The Petition Fails to Identify Why One Having Ordinary Skill in the
`Art Would Have Been Motivated to Combine Ciarcia and Hastreiter
`(Ground 2) ........................................................................................... 49
`IV. CONCLUSION .............................................................................................. 50
`
`
`
`
`
`ii
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`

`

`
`
`Federal Cases
`
`TABLE OF AUTHORITIES
`
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) .................................................................... 27, 28
`
`Gen. Elec. Co. v. U.S.,
`572 F.2d 745 (Ct. Cl. 1978) .................................................................................. 5
`
`In ResQNet.com, Inc. v. Lansa, Inc.,
`594 F.3d 860 (Fed. Cir. 2010) ............................................................................ 28
`
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) .................................................................... 27, 28
`
`Kyocera Wireless Corp. v. Int'l Trade Comm'n,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................... 27
`
`Therasense, Inc. v. Becton, Dickinson & Co.,
`560 F. Supp. 2d 835 (N.D. Cal. 2008) ................................................................ 26
`
`Federal Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 28
`
`35 U.S.C. § 102(a) – (b) (2010) ......................................................................... 28, 29
`
`35 U.S.C. § 102(a) and (b) ....................................................................................... 26
`
`35 U.S.C. § 102(b) ....................................................................................... 26, 27, 28
`
`35 U.S.C. § 103(a) ..................................................................................................... 2
`
`35 U.S.C. § 112, ¶ 6 ..........................................................................................passim
`
`35 U.S.C. § 313 .................................................................................................... 1, 24
`
`35 U.S.C. § 314(A) ............................................................................................ 24, 25
`
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 3
`
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 2
`
`iii
`
`

`

`
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 CPR. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`37 CPR. § 42.107(b) ................................................................................................ 1
`
`iv
`iV
`
`

`

`
`
`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 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)
`
`
`
`v
`
`

`

`IPR2014-01106
`
`
`
`U.S. Patent No. 5,255,313
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`Universal Electronics Inc. (“UEI” or “Patent Owner”) respectfully submits
`
`this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. §
`
`42.107 in response 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”). This Preliminary Response is timely under 37
`
`C.F.R. § 42.107(b) because it is being filed within three months of the mailing date
`
`of the Notice of Filing Date Accorded to Petition and Time for Filing Patent
`
`Owner Preliminary Response (Paper 3), which was mailed on July 8, 2014.
`
`I.
`
`INTRODUCTION
`In its Petition for Inter Partes Review, Petitioner alleges that the ’313 Patent
`
`is rendered obvious by several prior art references. In Section III.B.2 of the
`
`Petition labeled, “The specific art and statutory grounds on which the challenge is
`
`based,” the Petitioner identifies four references. (Pet. at 5 – 6.) The first reference
`
`is U.S. Patent No. 4,918,439 (“Wozniak”), which was filed on October 5, 1988,
`
`and issued on April 17, 1990. (Id. at 5.) The second reference is U.S. Patent No.
`
`4,667,181 (“Hastreiter”), which was filed on July 15, 1983, and issued on May 19,
`
`1987. (Id.) The third reference is the “CORE Serial Interface (CS-232) Manual”
`
`(“CS-232 Manual”). (Id.) The Petition indicates that the CS-232 Manual was
`
`published in “1998 or earlier” based on a copyright notice showing “1987, 1988.”
`
`1
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`(Id. at 5.) Finally, the fourth reference is an article written by Steve Ciarcia
`
`entitled, “Build a Trainable Infrared Master Controller” (“Ciarcia”). (Id. at 5 – 6.)
`
`The Petition identifies two grounds on which the request for inter partes
`
`review is based. “Ground 1” alleges that “Claims 1, 2, and 20 are unpatentable as
`
`obvious over Wozniak (Ex. 1005) in light of the CS-232 Manual (Ex. 1008)) [sic]
`
`and Hastreiter (Ex. 1006) under 35 U.S.C. § 103(a).” (Id. at 6.) “Ground 2”
`
`alleges that “Claims 1, 2, and 20 of the ’313 Patent are unpatentable as obvious
`
`over Ciarcia (Ex. 1007) in light of Hastreiter (Ex. 1006) under 35 U.S.C. § 103(a).”
`
`(Id.)
`
`The Board should decline to institute an inter partes review proceeding with
`
`respect to the ’313 Patent because each ground suffers from fatal defects. For
`
`example, the Petition fails to 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, a trial should not be
`
`instituted because 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. Nevertheless, should the Board decide to
`
`institute a trial the Patent Owner reserves the right to present additional arguments.
`
`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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`II. CLAIM CONSTRUCTION
`In an inter partes review, a claim is construed using the “broadest reasonable
`
`construction in light of the specification.” 37 C.F.R. § 42.100(b). That said,
`
`Petitioner argues that the following phrases from Claims 1, 2, and 20 should be
`
`construed:
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`“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);
`
`(5)
`
`“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
`
`(6)
`
`“data coupling means for periodically coupling said
`computer to said remote control for receiving from said
`
`3
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`computer memory and inputting into said memory means
`of said remote control said code data for creating
`appropriate IR lamp driver instructions” (Claim 20).
`
`(Pet. at 13 – 18.) Therefore, the Preliminary Response will address each phrase
`
`proposed for construction in turn.
`
`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. 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 has been depressed the CPU 56 will then know what function is to
`
`be carried out.” (’313 Patent col.8 ll.3-5.)
`
`4
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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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`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). 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.” 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.
`
`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
`
`5
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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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`function is to be carried out, for performing the function of inputting commands
`
`into the remote control.
`
`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).)
`
`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.
`
`6
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`

`

`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`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)
`
`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.
`
`7
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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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`However, Patent Owner disagrees with Petitioner’s proposed construction to
`
`the extent that it requires a specific aspects of patentee’s preferred embodiment(s)
`
`that are not necessary for supplying an infrared signal to a controlled device. For
`
`instance, the Petition states that the corresponding structure should be limited to “
`
`terminals (1-3) of a serial port … as shown, e.g., in FIG. 9B and described in the
`
`specification, e.g., at 9:7-16 and 9:35-38,” but provides no explanation as to why
`
`the data port should be limited to the specific serial receiving port shown, much
`
`less the detailed arrangement described in the cited portions of the specification
`
`and figures. (Pet. at 15 (citing Bristow Decl. ¶¶ 33-34) (emphasis added).) Indeed,
`
`any data port is capable of enabling the receipt receiving data, and the port need
`
`not be a serial port.
`
`Further, the Petition states that the corresponding structure should be limited
`
`to a serial receiving port that is “coupled directly to ports (112, 121) of the CPU
`
`(56).” (Pet. at 15 (emphasis added).) However, the express language of Claim 1 is
`
`“a receiving port coupled to said CPU,” i.e., without limiting the coupling to direct
`
`coupling. Although the corresponding function is “enabling code data for creating
`
`appropriate IR lamp driver instructions to be supplied from outside the remote
`
`control through the receiving port of the terminal means directly to the CPU for
`
`direct entry to the memory,” the reference to “directly” in that function refers to the
`
`flow of the code data from the outside source to the CPU (as opposed to the
`
`8
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`memory), and not the nature of the physical connections between the receiving port
`
`and the CPU.
`
`Moreover, the Petition includes in its statement of the corresponding
`
`structure the language “as shown in (i) FIGS. 20-22, (ii) FIG. 26, (iii) FIGS. 23 and
`
`24, and (iv) FIG. 25, respectively, and described in the specification at
`
`corresponding parts at 19:39-21:53.” (Pet. at 15 (citing Bristow Decl. ¶¶ 33-34).)
`
`Patent Owner disagrees with the Petition to the extent that the Petition suggests
`
`that the structure of the “coupling means” must include the specific structures
`
`shown in the example of Figures 20-22 for the connection to a computer directly,
`
`the structure shown in the example of Figure 26 for the connection to a telephone
`
`line, the structure shown in the example of Figures 23 and 24 for the connection to
`
`a modem, or the structure shown in the example of Figure 25 for the connection to
`
`a television set through a VBI decoder. The structures of Figures 20-26 in the ’313
`
`Patent are merely exemplary, as is the detailed description spanning from column
`
`19, line 39 through column 22, line 41. For instance, “a cable 208” is shown as an
`
`exemplary coupling means in Figure 20, whereas “a cable 202” is shown as an
`
`exemplary coupling means in Figure 10.
`
`9
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`IPR2014-01106
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
`US. Patent No. 5,255,313
`
`FIG. 10
`
`
`
`
`
`
`
`10
`
`10
`
`
`
`

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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`(’313 Patent, Fig. 10 & col.9 ll.39 – col.10. l.4; id. at Fig. 20 & col.19 ll.39-
`
`55.) Both Figure 10 and Figure 20 show structures that can serve as “data coupling
`
`means” according to Claim 1, but the Petition ignores Figure 10 and the other
`
`structure disclosed in the specification. Given that the specification broadly
`
`discloses a cable in general as a data coupling means, there is no basis to limit the
`
`data coupling means to, for example, a 9-pin serial cable. Petitioner simply has not
`
`shown that any of those details are necessary to the claimed function of “coupling
`
`the remote control to the computer, (i) directly, (ii) through a telephone line, (iii)
`
`through a modem and a telephone line, or (iv) through decoding means and a
`
`television set to receive a television signal picked up by the televisions set.” The
`
`same applies to not limiting the structure to the specific example structures
`
`identified in Figures 20-26 and their associated descriptions in the specification,
`
`when any data cable is capable of performing the claimed function.
`
`Accordingly, the correct construction of “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 terminal of a receiving port coupled to a port
`
`11
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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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`of the CPU and 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, or equivalents thereof, for performing the function of 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) through decoding means
`
`and a television set to receive a television signal picked up by the televisions set.
`
`Finally, the Board should reject Petitioner’s claim construction argument
`
`that the ’313 Patent does not disclose any structure for “periodically coupling said
`
`computer to said remote control.” (Pet. at 15-16.) For one, the ’810 Patent to
`
`which the ’313 Patent claims priority discloses periodically coupling the remote
`
`control to a computer, as explained below in Section III.B. (See, e.g., ’810 Patent
`
`col.8 ll.46-47 (referencing “infinite upgradability” for the remote control).)
`
`Furthermore, the ’313 Patent also discloses using a cable to couple the remote
`
`control to a computer as well as various data ports to attach the cable from the
`
`computer to the remote control. (See, e.g., ’313 Patent col.2 ll.50-58 (explaining
`
`that the remote control can be periodically coupled to a computer).) One of
`
`ordinary skill in the art would understand that a cable (from the computer) may be
`
`12
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`attached and unattached, i.e., periodically coupled to the remote control via a data
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`port.
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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.
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`To that end, the ’313 Patent makes plenty clear to those having ordinary skill
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`in the art the structure that enables this function. For example, the ’313 Patent
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`discloses a terminal of a receiving port coupled to a port of the CPU as well as a
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`cable with first and second connectors, one of which can be coupled to the
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`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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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`appropriate IR lamp driver instructions.” Thus the Petition’s discussion about
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`software and the “handling” of code data is simply beside the 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 port coupled to said CPU for enabling code data for
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`creating appropriate IR lamp driver instructions … to be supplied from outside said
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`remote control through said receiving port of said terminal means directly to said
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`CPU for direct entry to said memory means” is a means-plus-function limitation
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`pursuant to 35 U.S.C. § 112, paragraph 6, that the function is “enabling code data
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`for creating appropriate IR lamp driver instructions to be supplied from outside the
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`remote control through the receiving port of the terminal means directly to the
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`CPU for direct entry to the memory,” and that the corresponding structure includes
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`a terminal of a receiving port coupled to an input port of the CPU. However,
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`Patent Owner disagrees with Petitioner’s proposed construction to the extent that it
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`requires specific aspects of patentee’s preferred embodiment(s) that are not
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`necessary for supplying an infrared signal to a controlled device.
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`For instance, the Petition states that the corresponding structure should be
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`limited to “a terminal (3) of a serial receiving port … as shown, e.g., in FIG. 9B
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`IPR2014-01106
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`U.S. Patent No. 5,255,313
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`and described in the specification, e.g., at 9:7-16 and 9:35-38,” but provides no
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`explanation as to why the data port should be limited to the specific serial
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`receiving port shown, much less the detailed arrangement described in the cited
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`portions of the specification and figures. (Pet. at 16-17 (citing Bristow Decl. ¶ 37)
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`(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.
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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 an input port (112) of the CPU
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`(56).” (Id. (emphasis added).) However, the express language of Claim 2 is “a
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`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.
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`Accordingly, the correct construction of “data coupling means including
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`terminal means comprising a receiving port coupled to said CPU for enabling code
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`data for creating appropriate IR lamp driver instructions … to be supplied from
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`U.S. Patent No. 5,255,313
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`outside said remote control through said receiving port of said terminal means
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`directly to said CPU for direct entry to said memory means” is a terminal of a
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`receiving port coupled to an input port of the CPU, or equivalents thereof, for
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`performing the function of enabling code data for creating appropriate IR lamp
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`driver instructions to be supplied from outside the remote control through the
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`receiving port of the terminal means directly to the CPU for direct entry to the
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`memory.
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`The Petition again indicates that “the ’313 Patent does not disclose any
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`structure for handling ‘code data’ as recited in the corresponding function.” (Pet.
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`at 17.) As explained above, though, the relevant function is receiving code data,
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`not handling it, and the ’313 Patent discloses at length the structure the enables the
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`remote control to receive code data. (See, e.g., ’313 Patent col.9 ll.7-16, col.9
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`ll.39-59, col.19 ll.39-55, & Figs. 10 & 20.)
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`E.
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`“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)
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`Patent Owner agrees that “coupling means for coupling said terminal means
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`to a computer directly, through a telephone line, through a modem and telephone
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`line, or through decoding means and a television set” is a means-plus-function
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`limitation pursuant to 35 U.S.C. § 112, paragraph 6, that the function is “coupling
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`said terminal means to a computer, directly, through a telephone line, through a
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`U.S. Patent No. 5,255,313
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`modem and telephone line, or through decoding means and a television set,” and
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`that the corresponding structure is a cable for coupling the remote’s terminal to (i)
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`a computer directly, (ii) a telephone line, (iii) a modem, or (iv) through a VBI
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`decoder to a television set. However, Patent Owner disagrees with Petitioner’s
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`proposed construction to the extent that it requires specific aspects of patentee’s
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`preferred embodiment(s) that are not necessary for supplying an infrared signal to
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`a controlled devic