IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Applicant:
`
`Dresti et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01109
`
`v.
`
`Filing Date: November 6, 2002
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`7,831,930
`
`Trial Paralegal: Cathy Underwood
`
`Attorney Doc.: 059489.143600
`
`Title:
`
`SYSTEM AND
`METHOD FOR
`DISPLAYING A USER
`INTERFACE FOR A
`REMOTE CONTROL
`APPLICATION
`
`
`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71(d)(1)
`
`
`
`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
`20th day of January 2015.
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`/s/ Cynthia Tapia
`Cynthia Tapia
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Applicant:
`
`Dresti et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01109
`
`v.
`
`Filing Date: November 6, 2002
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`7,831,930
`
`Trial Paralegal: Cathy Underwood
`
`Attorney Doc.: 059489.143600
`
`Title:
`
`SYSTEM AND
`METHOD FOR
`DISPLAYING A USER
`INTERFACE FOR A
`REMOTE CONTROL
`APPLICATION
`
`
`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71(d)(1)
`
`
`
`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
`20th day of January 2015.
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`/s/ Cynthia Tapia
`Cynthia Tapia
`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 1
`
`A.
`
`B.
`
`Claim 1 Requires a Specific Sequence of Operations When
`Displaying a List of Favorite Channels and Enabling a User to
`Interact with the List.............................................................................. 2
`Realistic and Evans Do Not Teach or Suggest the Specific
`Sequence of Operations Required by Claim 1 ...................................... 3
`
`III. CONCLUSION ................................................................................................ 6
`
`
`
`i
`
`
`
`
`
`Regulations
`
`TABLE OF AUTHORITIES
`
`37 C.F.R. § 42.71(d)(1) .............................................................................................. 1
`
`ii
`
`
`
`
`
`2001.
`
`
`2002.
`
`
`2003.
`
`
`2004.
`
`
`2005.
`
`
`2006.
`
`
`2007.
`
`
`2008.
`
`
`2009.
`
`
`2010.
`
`
`2011.
`
`
`2012.
`
`
`2013.
`
`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)
`
`Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B.
`July 23, 2014)
`
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014)
`
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00246, Paper 6
`(P.T.A.B. June 18, 2014)
`
`eBay, Inc. v. Paid, Inc., CBM2014-00125, Paper 15 (P.T.A.B.
`Sept. 30, 2014)
`
`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)
`
`OpenTV, Inc. v. Cisco Tech., Inc., IPR2013-00329, Paper 9 (P.T.A.B.
`Nov. 29, 2013)
`
`Printing Indus. of Am. v. CTP Innovations, LLC, IPR2013-00474,
`Paper 16 (P.T.A.B. Dec. 31, 2013)
`
`TRW Auto. US LLC v. Magna Elecs. Inc., IPR2014-00296, Paper 15
`(P.T.A.B. July 3, 2014)
`
`TRW Auto. US LLC v. Magna Elecs. Inc., IPR2014-00297, Paper 15
`(P.T.A.B. July 3, 2014)
`
`iii
`
`
`
`
`
`
`2014.
`
`
`2015.
`
`
`2016.
`
`
`
`TRW Auto. US LLC v. Magna Elecs. Inc., IPR2014-00298, Paper 19
`(P.T.A.B. July 3, 2014)
`
`Fidelity Nat’l Info. Servs., Inc. v. DataTreasury Corp., IPR2014-
`00489, Paper 9 (P.T.A.B. Aug. 13, 2014)
`
`Claim Construction Order from Universal Elecs., Inc. v. Peel Techs.,
`Inc., No. 8:13-cv-01484 (C.D. Cal.)
`
`iv
`
`
`
`IPR2014-01109
`
`
`
`U.S. Patent No. 7,831,930
`
`Patent Owner Universal Electronics Inc. (“UEI” or “Patent Owner”), hereby
`
`requests rehearing on the Board’s January 6, 2015, Decision (Paper 9, hereinafter
`
`“Decision”) under 37 C.F.R. § 42.71(d)(1). UEI timely filed the present request
`
`within 14 day of the entry of the Decision. 37 C.F.R. § 42.71(d)(1).
`
`I.
`
`INTRODUCTION
`
`UEI respectfully submits that the Board either misapprehended or
`
`overlooked certain claim language when it construed certain claim terms and
`
`subsequently held that there is a reasonable likelihood that Claim 1 of U.S. Patent
`
`No. 7,831,930 (the “‘930 patent”) is obvious in view of “Realistic Universal
`
`Remote Control Owner’s Manual Cat. No. 15-1902” (“Realistic”) and U.S. Patent
`
`No. 4,825,200 (“Evans”). UEI respectfully requests that, upon reconsideration, the
`
`Board reverse the Decision in part, and decline to institute inter partes review on
`
`Claim 1 of the ‘930 patent on the obviousness ground based on Realistic and
`
`Evans.
`
`II. ARGUMENT
`
`UEI previously argued that Realistic and Evans do not teach or suggest
`
`“allowing a plurality of lists of favorite channels to be defined for display in a
`
`display of the hand held device . . . whereby the user may interact with the at least
`
`one of the plurality of lists when displayed in the display of the hand held device to
`
`cause the hand held device to transmit one or more command codes to the at least
`
`1
`
`
`
`IPR2014-01109
`
`
`
`U.S. Patent No. 7,831,930
`
`one of the plurality of home appliances…,” as recited in Claim 1. (See Prelim.
`
`Resp., Paper No. 7, pp. 18-28.) This claim language requires a specific sequence
`
`of operations that Realistic and Evans neither teach nor suggest.
`
`A. Claim 1 Requires a Specific Sequence of Operations When
`Displaying a List of Favorite Channels and Enabling a User to
`Interact with the List
`
`Claim 1 recites in relevant part, “allowing a plurality of lists of favorite
`
`channels to be defined for display in a display of the hand held device . . . whereby
`
`the user may interact with the at least one of the plurality of lists when displayed in
`
`the display of the hand held device to cause the hand held device to transmit one
`
`or more command codes to the at least one of the plurality of home appliances …”
`
`(’930 Patent col.38 ll.31-41 (emphases added).) The Board overlooked the fact
`
`that this claim language requires certain events to occur in a specific sequence.
`
`First, Claim 1 requires permitting a user to interact with a list of favorite
`
`channels when the list is displayed on the display of the handheld device. The
`
`list of favorite channels must be displayed before and during a user’s interaction
`
`with it to meet the claim requirement that the user interact with a displayed list of
`
`favorite channels. Second, Claim 1 requires that the user’s interaction with the
`
`displayed favorite channel list causes the hand held device to transmit one or more
`
`command codes to a home appliance. Thus, Claim 1 requires the following
`
`sequence of pertinent events:
`
`2
`
`
`
`IPR2014-01109
`
`
`
`U.S. Patent No. 7,831,930
`
`1. At least one of the lists of favorite channels is displayed on the display of
`
`the hand held device;
`
`2. The user interacts with the displayed list of favorite channels; and
`
`3. The hand held device transmits one or more command codes to at least
`
`one home appliance.
`
`B. Realistic and Evans Do Not Teach or Suggest the Specific
`Sequence of Operations Required by Claim 1
`
`Realistic states, “[a]fter you program your favorite-channel list into the
`
`URC, follow these steps to use the favorite-channel feature.” (Realistic at 38.)
`
`Realistic then shows the following four steps for using the favorite channel feature,
`
`where the left-hand column shows the instructions, and the right-hand column
`
`shows the corresponding display on the remote:
`
`
`
`
`
`3
`
`
`
`IPR2014-01109
`
`
`
`U.S. Patent No. 7,831,930
`
`
`
`(Id. at 38 – 39.) However, the boxes on the right-hand side, which show the
`
`display of the Realistic remote control, are blank and do not show the display of
`
`any favorite channel list. Likewise, Realistic does not state that a favorite channel
`
`list is displayed when someone is using that favorite channel list. (See generally
`
`id.)
`
`
`
`On this point, the Board acknowledged that “a channel number is not shown
`
`in Realistic in the illustrated step 2 of using the favorite-channel feature.”
`
`(Decision at 9 (emphasis added).) However, the Board then went on to draw the
`
`double-negative conclusion that “when the remote transmits the command code
`
`(channel number) to the device, one would not necessarily draw the inference that
`
`the channel number is not displayed when the command code is transmitted.” (Id.
`
`(emphases added).) In support, the Board, pointed to Step 1, shown above, where
`
`the “FAV” indicator is said to appear in the display but is not shown. (Id.)
`
`
`
`The Board’s reasoning is flawed for two reasons. First, while Step 1 of
`
`Realistic states that “[t]he FAV indicator appears,” neither Step 2 nor any other
`
`portion of Realistic discloses the display of any channel numbers, much less a list
`
`of favorite channels, while using the favorite mode. (Decision at 9.) Thus,
`
`4
`
`
`
`IPR2014-01109
`
`
`
`U.S. Patent No. 7,831,930
`
`drawing any inferences from what, if anything, is displayed on the Realistic remote
`
`during Step 2 is completely speculative.
`
`Second, even assuming arguendo that one could infer from Realistic that the
`
`channel number could be displayed “when the command code is transmitted,”1 the
`
`relevant inquiry for Claim 1 is whether Realistic teaches or suggests displaying a
`
`list of favorite channels before and during the user’s interaction with the list, not
`
`when the command code is transmitted. If a channel number is displayed only
`
`when a command code is transmitted, then the user has not interacted with a list of
`
`favorite channels when displayed on a display, as Claim 1 requires. Thus, even if
`
`the Board’s inference is correct, Realistic does not teach or suggest Claim 1’s
`
`required sequence of events.
`
`Evans does nothing to overcome Realistic’s shortcomings. Evans does not
`
`disclose favorite channels at all. (See generally Evans.) And as Petitioner and its
`
`consultant acknowledge, Evans only discloses displaying the name of a key or
`
`function after the corresponding key has been pressed. (Evans at col. 11, ll. 54-66
`
`(“When the unit is in [the Run] condition, it normally displays the time and day of
`
`the week… The controller is then held with the I/R transmitter 138 pointed in the
`
`general direction of the device to be controlled and the key which has been
`
`programmed for the desired function on the desired device is operated. This
`
`
`1 UEI disputes that such an inference is reasonable from Realistic’s disclosure.
`
`5
`
`
`
`IPR2014-01109
`
`
`
`U.S. Patent No. 7,831,930
`
`causes the name of the key or function to appear on display 14 and causes the I/R
`
`code for the function to be outputted.”)(emphases added); see also Decision at 10;
`
`see also Petition, Paper No. 1, p. 27 (“Evans [] teaches that the LCD displays the
`
`name of the key or function of the code to be outputted.); see also Geier Decl., Ex.
`
`1008 (“Evans teaches to display the name of the key or function of the code to be
`
`outputted.”).)
`
`At best, the combination of Realistic and Evans suggests only displaying a
`
`channel number sometime after the user has already interacted with the remote
`
`control. Put differently, Realistic and Evans, alone or in combination, do not teach
`
`or suggest “allowing a plurality of lists of favorite channels to be defined for
`
`display in a display of the hand held device . . . whereby the user may interact with
`
`the at least one of the plurality of lists when displayed in the display of the hand
`
`held device,” as recited in Claim 1. Thus, Petitioner has not shown a reasonable
`
`likelihood that the combination of Realistic and Evans renders Claim 1 obvious.
`
`III. CONCLUSION
`The Board overlooked the specific sequence of certain events required by
`
`Claim 1 of the ‘930 patent. Taking that sequence of events into account, Petitioner
`
`has not shown a reasonable likelihood that the combination of Realistic and Evans
`
`renders Claim 1 obvious. Accordingly, upon reconsideration, UEI respectfully
`
`requests that the Board reverse its Decision in part and decline to institute inter
`
`6
`
`
`
`IPR2014-01109
`
`
`
`U.S. Patent No. 7,831,930
`
`partes review on Claim 1 of the ’930 patent on the obviousness ground based on
`
`Realistic and Evans.
`
`Date: January 20, 2015
`
`
`
`
`
`Respectfully Submitted,
`GREENBERG TRAURIG, LLP
`
`
`
`
`
`
`
` /Eric J. Maiers/
`
`
`By: Eric J. Maiers, Reg. No. 59,614
`James J. Lukas, Reg. No. 59,114
`Matthew J. Levinstein, Pro Hac Vice
`Rob R. Harmer, Reg. No. 68,048
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`(312) 456-8400
`
`7
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Douglas A. Miro
`Ostrolenk Faber LLP
`1180 Avenue of the Americas New
`York, NY 10036
`Telephone: (212) 596-0500
`Facsimile: (212) 382-0888
`dmiro@ostrolenk.com
`
`Peter H. Kang, Reg. No. 40,350
`Theodore W. Chandler, Reg. No. 50,319
`Ferenc Pazmandi, Reg. No. 66,216
`Sidley Austin LLP
`1001 Page Mill Rd.
`Building One
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (65) 565-7100
`pkang@sidley.com
`tchandler@sidley.com
`fpazmandi@sidley.com
`
`January 20, 2015
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Cynthia Tapia
`Cynthia Tapia
`
`
`Date:
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