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`Applicant:
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`Case No.:
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`Filing Date:
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`Patent No.:
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`Title:
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`Dresti et al.
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`IPR2014-01109
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`11/06/02
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`7,831,930
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`System and Method for )
`Displaying a User
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`Interface for a Remote
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`Control Application
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`Universal Remote Control, Inc.
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`v.
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`Universal Electronics, Inc.
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`Trial Paralegal: Kathy
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`Underwood
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`Attny Doc.: 059489.143600
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`DECLARATION OF ALEX COOK
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`
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Certificate of Filing: I hereby certify that his correspondence is being electronically filed with the USPTO on this
`25th day of March, 2015.
`
`
`
`By: /Eric J. Maiers/
`Eric J. Maiers
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`Universal Electronics Exhibit 2029, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
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`IPR2014-01109
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`I, Alex Cook, hereby declare as follows:
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`I.
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`Background And Qualifications
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`1. My name is Alex Cook. I began work with home entertainment devices in
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`the employ of a major equipment supplier to the cable tv industry in 1983 as an
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`engineer designing settop boxes. I have been directly involved in the design and
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`development of remote control devices, including multi-device remote, two-way
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`remotes and remotes with displays. In my work with cable tv and settop boxes, I
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`have dealt directly with the issues involved in the configuration and use of home
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`entertainment systems. I am a member of the Society of Cable
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`Telecommunications Engineers (SCTE) and have participated in the setting of
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`technical standards for use by the cable tv industry and in the IrDA setting
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`standards for infrared data communication. I currently consult with Comcast Cable
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`in the development of new electronic devices for the home.
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`2.
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`In 1977, I earned a Bachelor of Electrical Engineering degree from the
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`Georgia Institute of Technology in Atlanta, GA.
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`3.
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`In 1978, I attended additional non-degree graduate level classes at Georgia
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`Tech.
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`4.
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`Between the years of 1975 and 1977, I worked for the Georgia Tech
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`Research Institute, where my responsibilities included computer programming and
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`millimeter-wave and submillimeter-wave spectroscophy.
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`1
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`5.
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`Between the years of 1978 and 1979 I worked for the Georgia Tech
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`Research Institute as a Research Engineer, where my job responsibilities included
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`the design of a distributed process energy management and control system, the
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`design and programming of microcomputer circuits, and the design of power line
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`data transmission circuits.
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`6.
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`Between the years of 1979 and 1980, I worked for Datec Systems, Inc. as an
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`Engineer. At Datec, I helped develop a distributed process control system for the
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`Strategic Petroleum Reserve. In this role, I developed real-time programming of
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`supervisory control and data acquisition systems.
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`7.
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`Between the years of 1981 and 1983, I worked as an engineer for Loral
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`Information and Display Systems in Atlanta, GA as a Principal Engineer. My
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`responsibilities there included the design of high speed display generator hardware
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`for tactical displays in military aircraft.
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`8.
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`Between the years of 1983 and 1996, I worked in various engineering and
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`engineering management positions at Scientific-Atlanta, Inc. in Norcross, GA, a
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`major supplier of products to the cable tv industry. As an engineer, I designed
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`settop boxes for cable television including various remote control devices for use
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`in cable tv. My work included hardware design of both digital and analog circuits,
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`software design for microprocessors, product features and user interface design,
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`and the design of all aspects of remote controls for use in cable tv. My
`
`2
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`responsibilities also included the drafting of patent disclosures and the extensive
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`review of patents in the field of cable tv technology (including remote controls).
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`During this time I worked daily with entertainment system technology; basic,
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`multi-device, and universal remote controls; and all aspects of user experience in
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`home entertainment.
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`9.
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`Since 1996, I have worked as a consultant in product development including
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`consulting work for Universal Electronics Inc. (“UEI” or “Patent Owner”) in 1996.
`
`10.
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`I have also previously served as an expert witness for UEI in several patent
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`infringement actions. Those litigations include Phillips Electronics North America
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`Corp. v. Universal Electronics Inc., No. 94-392-RRM (D. Del. 1994) and
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`Universal Electronics Inc. v. Remote Technologies, Inc., No. 8-06-cv-00566 (C.D.
`
`Cal. 2006).
`
`11. From 2010 to the present, I have been a consultant to Comcast Cable. In that
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`role, I have assisted in the development of the next generation of cable tv devices
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`for the cable consumer, including settop boxes, video gateways, video client
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`devices, remote controls, and wireless devices for the home.
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`12.
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`I am a named inventor on four granted and pending U.S. patents and patent
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`applications, the majority of which relate to cable tv devices and technology
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`including the use of infrared signaling to program settop boxes and a two-way
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`remote control with an LCD display.
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`3
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`13.
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`I have been retained in this matter by UEI to provide an analysis of U.S.
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`Patent No. 7,831,930 (“the ’930 Patent”) and the asserted prior art pursuant to the
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`Board’s decision instituting an inter partes review of Claim 1 of the ’930 Patent,
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`and specifically to rebut the opinions of Petitioner’s expert, Mr. James T. Geier. I
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`have also been retained to analyze what a person of ordinary skill in the art in the
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`relevant field would have understood as of November 20, 2001, which I
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`understand from counsel is the priority date for the ’930 Patent.
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`14.
`
`I am being compensated at the rate of $350 per hour for my work. My fee is
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`not contingent in any way on the outcome of this inter partes review or any
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`technical position I explain in this declaration. I have no financial interest in UEI
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`or Universal Remote Control, Inc. (“URC” or “Petitioner”), and I have never been
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`employed by Petitioner in any capacity.
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`II. Materials Considered
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`15.
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`In preparing this declaration, I reviewed the materials listed in Appendix A
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`and relied upon my personal knowledge and experience in the relevant art.
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`III. Legal Principles
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`A. Claim Construction
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`16.
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`I have been informed by counsel and I understand that the purpose of the
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`claim construction process is to determine the meaning of the terms in the claims
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`4
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`of the ’930 Patent to a person of ordinary skill in the art as of the time that the
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`patent application was filed.
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`17. Counsel has informed me that in inter partes review proceedings, 37 C.F.R.
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`§ 42.100(b) requires that the claim terms of an unexpired patent are to be given
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`their broadest reasonable interpretation in view of the surrounding claim language
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`and the specification based on the perspective of one having ordinary skill in the
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`art.
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`18.
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`I also understand that the words of the claims, the specification, and the
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`prosecution history are to be considered in order to construe the claims. These
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`three sources are commonly referred to as “intrinsic evidence,” while everything
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`else is referred to as “extrinsic evidence.”
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`19. At the outset, it is my understanding that the words of a claim are generally
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`given their ordinary and customary meaning to a person of ordinary skill in the art
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`as of the time that the patent application was filed. This is because patents and
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`patent claims are addressed to and intended to be read by others of skill in the
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`pertinent art, rather than the general public.
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`20.
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`It is my further understanding that the same words and phrases within a
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`claim or claims are presumed to have the same meaning. It is also my
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`understanding that different words and phrases within a claim or claims are
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`presumed to have different meanings. Similarly, all words in a claim have
`
`5
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`meaning, and a word or phrase in a claim should not be interpreted so as to render
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`other words or phrases in the claim superfluous.
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`21.
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`It is my understanding that the person of ordinary skill in the art is deemed
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`to read the claim term not only in the context of the particular claim in which the
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`disputed term appears, but in the context of the entire patent, including the
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`specification and the prosecution history.
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`B. Obviousness
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`22.
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`I will not offer opinions of the law, as I am not an attorney. However,
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`counsel has informed me of several principles concerning patent validity and
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`invalidity, upon which I have relied to arrive at my conclusions.
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`23.
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`I understand that a patent claim is “obvious” and therefore invalid under 35
`
`U.S.C. § 103 if the differences between the claimed invention and the prior art are
`
`such that the claimed invention as a whole would have been obvious before the
`
`effective filing date of the claimed invention to a person having ordinary skill in
`
`the art to which the claimed invention pertains.
`
`24.
`
`I understand that an obviousness analysis must consider: (1) the scope and
`
`content of the prior art; (2) the differences between the claims and the prior art; (3)
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`the level of ordinary skill in the pertinent art; and (4) secondary considerations of
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`nonobviousness such as unexpected results, commercial success, long-felt but
`
`6
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`unsolved needs, failure of others, copy by others, licensing, and skepticism of
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`experts.
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`25.
`
`I have been informed that a conclusion of obviousness may be based upon a
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`combination of prior art references. I understand that it can be important to
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`identify a reason that would have prompted a person of ordinary skill in the
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`relevant field to combine the elements in a way the claimed new invention does. I
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`further understand that to determine obviousness the courts look to the interrelated
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`teachings of multiple patents, the effects of demands known to the design
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`community or present in the marketplace, and the background knowledge
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`possessed by a person having ordinary skill in the art.
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`IV. The State Of The Art As Of The Priority Date Of The ’930 Patent
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`26. As noted above, I understand from counsel that the priority date of the ’930
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`Patent is November 20, 2001.
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`27.
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`I agree with Mr. Geier that for purposes of the ’930 Patent, the relevant field
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`concerns remote controls and consumer electronics. However, I believe that the
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`relevant field would also concern home entertainment systems rather than home
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`automation systems.
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`28. As noted above, I have nearly four decades worth of experience in that field.
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`7
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`29.
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`I agree in part with Mr. Geier’s understanding of the level of skill that a
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`person of ordinary skill in the art would have had around November 2001, as set
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`forth in paragraph 17 of his declaration regarding the ’930 Patent.
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`30. Specifically, I believe that someone with a bachelor degree in electrical
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`engineering, telecommunications, or computer science (or an equivalent degree);
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`with two years of experience in the communications industry; with an awareness of
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`programmable universal remote controls; and with two years of experience with
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`techniques for designing user interfaces would have been more than qualified as
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`one having ordinary skill in the art.
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`31. Rather, I believe that one having ordinary skill in the art would have had
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`either (a) a bachelor degree in electrical engineering, telecommunications, or
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`computer science (or an equivalent degree) and an awareness of programmable
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`universal remote controls, or (b) three or more years of technical experience
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`working with programmable universal remote controls.
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`32. Under any one of these proposed levels of ordinary skill in the art, I would
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`have qualified as one having ordinary skill in the art at latest by 1980.
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`33.
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`I agree with Mr. Geier that universal remote controls started to emerge
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`around the late 1980s. (Geier Decl. ¶ 20.) An increasing number of home
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`appliances including audio/visual devices were being introduced back then that
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`could be controlled via a remote. The universal remote controls of the late 1980s
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`8
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`were an attempt to simplify operation of these appliances by allowing users to
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`control more than one appliance with a single remote.
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`34. With the expansion of cable TV and satellite-delivered programming, the
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`number of television channels available in the 1980s and 1990s began expanding
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`rapidly. Cable systems moved from 12 channels to 36 channels, to 66 channels, to
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`80 channels and beyond. As the number of channels grew, so did the difficulty in
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`“clicking” through each channel to find the desired program or station. With
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`growing numbers of channels, it was increasingly difficult to remember which
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`station or program was associated with which channel. The idea of a favorite
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`channel list allowed the creation of a subset of channels that could be cycled
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`through, such that a user could advance through a subset of channels instead of all
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`available channels.
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`35. This technology was originally encompassed in cable TV converters and
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`satellite receivers and later was included in “Cable Ready” TV sets. As technology
`
`progressed, favorite channel lists began to be encompassed in the remote control
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`directly, as shown by Realistic, for example. The ability to display a channel
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`number on the remote became possible after LCD displays were incorporated on
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`battery-powered devices.
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`36. Favorite channel lists were a shortcut method of stepping through a list of
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`commonly accessed channels. In essence, a user could use a remote to step
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`9
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`through a subset of all available channels. This shortcut avoided the need to cycle
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`through the complete list of channels to find specific content or a specific program.
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`The favorite channel shortcut also avoided the need to look up a channel on a guide
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`for direct channel entry.
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`37. Even with this shortcut method, users of remotes up until the ’930 Patent
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`were forced to step through favorite channel lists one channel at a time.
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`38. Mr. Geier notes that a shortcut method of direct channel entry was also
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`known at this time. The key codes for a given channel could be recorded as a
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`“Macro.” “Macro” keys allow multiple key presses to be recorded and replaced
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`with a single key press which when pressed, sequentially transmits the codes
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`(channel numbers) for the recorded sequence. (Geier Decl.¶ 21.) I agree that this
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`capability was well understood at the time.
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`39. Mr. Geier states in paragraph 22 of his Declaration that the introduction of
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`displays on remote controls in the 1990s means that programs to design user
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`interfaces were also available at this time. I disagree with Mr. Geier’s logic and
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`find the point superfluous. As one of ordinary skill in the art, I know that the
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`software for any user interface of remote controls of this era was purposefully-
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`written and hand optimized because of the limited amount of program memory.
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`I’m not aware of any programs from this timeframe for the design of user
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`interfaces on remote controls.
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`10
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`V. The ’930 Patent
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`40.
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`In general, the ’930 Patent discloses a universal remote with a user interface
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`that displays a wide variety of information to a user. The user interface permits a
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`user to define favorite channel lists associated with one or more home appliances.
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`A favorites setup wizard assists a user to define these favorite channel lists, which
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`may cover a variety of genres and types of media. Each favorite channel list may
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`be specific to one particular home appliance or may span multiple home
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`appliances.
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`41. More specifically, the ’930 Patent introduced a remote that for the first time
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`permitted users to view a list of favorite channels before selecting a channel from
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`the remote’s display. In particular, the remote allowed users to select an icon
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`representing a specific channel to which a TV or other home appliance could be
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`tuned directly, without requiring the user to step through the channels on the
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`favorite channel list. With this improvement, users of remotes could review and
`
`make a channel selection from a favorite channel list displayed on the remote
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`without having to tune to each channel in a favorite channel list before reaching the
`
`desired channel. This functionality is disclosed in the specification, for example,
`
`beginning at column 19, line 28, which states how the user is given “direct access
`
`to his favorite programming (e.g., example, to cause the transmissions of
`
`commands to cause a device to tune to a favorite channel).”
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`11
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`42. Another aspect of the ’930 Patent involves defining how these lists of
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`favorite channels can be displayed on the remote. While the claims refer to these
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`lists as “lists of favorite channels” or “lists” for short, the detailed description of
`
`the ’930 Patent characterizes these lists as “Favorites Page(s)” in some places, such
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`as in column 19, for example.
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`43. Columns 19 and 20, FIGS. 17g & 17h, and Table 15 of the ’930 Patent all
`
`disclose examples of ways in which lists of favorite channels may be defined for
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`display in a display of the remote. For example, column 20 explains with
`
`reference to FIGS. 17g and 17h that the remote permits a user to define how
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`certain attributes of a favorite channel list will be displayed on the remote. A user
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`can identify a label and an image to represent a particular channel when the
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`favorite channel list is displayed on the remote.
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`VI. Claim Construction
`
`44.
`
`I have reviewed the Board’s Decision to Institute as well as the Board’s
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`Decision on the Request for Rehearing. (Paper No. 9, Decision to Institute
`
`(P.T.A.B. Jan. 6, 2015); (Paper No. 12, Decision on Request for Rehearing
`
`(P.T.A.B. Feb. 20, 2015).) I do not believe that those decisions apply proper
`
`constructions of the claim terms “interact with” and “a channel represented on the
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`at least one of the plurality of lists of favorite channels.”
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`12
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`45. Claim 1 requires that a user “interacts with” a favorite channel list when that
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`favorite channel list is displayed on 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 associated with the specified mode for the purpose of tuning
`
`the at least one of the plurality of home appliances to a channel represented on the
`
`at least one of the plurality of lists of favorite channels.”
`
`46. At the very least, I believe that a user would need to select a channel from
`
`the displayed favorite channel list to cause the hand held device to send one or
`
`more command codes that tune one or more home appliances to a channel
`
`represented on the favorite channel list.
`
`47. My understanding of what it means to “interact with” a displayed favorite
`
`channel list to cause the effect recited in claim 1 is also based on the example list
`
`of favorite channels shown in FIG. 17a of the ’930 Patent. Taking any action less
`
`than selecting a channel from the favorite channel list in FIG. 17a would not cause
`
`the remote to tune an appliance to a channel represented on that list. For example,
`
`simply scrolling through or viewing the favorite channel list without selecting a
`
`channel would not cause the effect recited in claim 1.
`
`48.
`
`I believe that the claim construction proposed above also follows the
`
`examples provided in the specification of the ’930 Patent. For example, the
`
`specification states, “The presentation engine 1108 manages the user interface that
`
`13
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`users interact with to command the operation of the remote control application, for
`
`example, to cause the transmission of commands to devices.” (’930 Patent at 7:61-
`
`64 (emphasis added).) In a second passage, the specification states, “By
`
`interacting with the wheel 110, the user may select a primary device 112 to initiate
`
`setup, or select another icon 114 to become the primary device” ’930 Patent at
`
`13:54-57 (emphasis added). In a third passage, the specification states, “The
`
`restore point may be reset if the user chooses to save the new configuration and
`
`update the restore point, for example by interacting with a check box in a save
`
`dialog.” (’930 Patent at 33:1-3 (emphasis added).) These passages demonstrate
`
`that to “interact with” involves the selection by the user of a specific displayed
`
`item.
`
`49. Claim 1 also indicates that based on the user’s interaction with the displayed
`
`favorite channel list, the hand held device (i.e., the remote) tunes at least one home
`
`appliance “to a channel represented on the at least one of the plurality of lists of
`
`favorite channels.”
`
`50. Counsel has informed me that when an element of a patent claim is preceded
`
`by the word “the,” that particular instance of the element refers back to the same
`
`element that was recited earlier in the claim (or a claim from which the subject
`
`claim depends).
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`14
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`51. Therefore, the reference to “the at least one of the plurality of lists of
`
`favorite channels” in the last two lines of claim 1 appears to refer back to prior
`
`instances of “at least one of the plurality of lists” at column 38, lines 38-40.
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`Because claim 1 states that the “at least one of the plurality of lists” is displayed
`
`when the user interacts with it, I believe that the channel to which the appliance is
`
`tuned is depicted on the favorite channel list that is displayed when the user
`
`interacts with the list.
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`52. When one says that an object is “represented on” a favorite channel list that
`
`is displayed on the remote’s display, I believe that one having ordinary skill in the
`
`art would interpret that phrase to mean that the object is depicted on or displayed
`
`on the remote’s display. It is common in the field of consumer electronics devices
`
`to refer to an object as being “represented on” a display. I believe that the ’930
`
`Patent’s extensive discussion in the context of the remote’s display and graphical
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`user interfaces (GUIs) makes this interpretation all the more likely.
`
`53. The exemplary favorite channel list shown in FIG. 17a also supports this
`
`interpretation. For example, I’m not aware of any way a user could interact with
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`the favorite channel list displayed in FIG. 17a to cause the remote to tune a TV to a
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`channel from page 3 without first displaying page 3 and a representation of the
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`channel to the user.
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`VII. Claim 1 of the ’930 Patent Is Not Rendered Obvious by the
`Combination of Realistic and Evans
`A. Realistic
`
`54. Realistic describes a remote of the type that required users to step through
`
`each channel of a favorite channel list one by one, as explained above. A user of
`
`the Realistic remote would have had no way of “jumping” between channels of the
`
`favorite channel list without stepping through each one. In comparison to the ’930
`
`Patent, Realistic does not permit a user to select a channel from a favorite channel
`
`list while the favorite channel list is displayed on the remote’s display.
`
`i.
`
`Allowing a Plurality of Lists of Favorite Channels to Be
`Defined for Display in a Display of the Hand Held Device
`55. Claim 1 recites a remote that “allow[s] a plurality of lists of favorite
`
`channels to be defined for display in a display of the hand held device.” As
`
`explained above, Columns 19 and 20, FIGS. 17g & 17h, and Table 15 of the’930
`
`Patent disclose exemplary ways in which lists of favorite channels may be defined
`
`for display in a display of the remote. Those examples illustrate how a user is
`
`permitted to define one or more attributes that govern how each favorite channel
`
`list appears in the remote’s display.
`
`56.
`
`If the patent applicant had intended merely for the remote to allow a user to
`
`define favorite channel lists that could be displayed, there would have been no
`
`need to specify that the favorite channel lists could be “defined for display in a
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`display of the hand held device” because claim 1 later specifies that the favorite
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`channel lists are displayed in the remote’s display. The patent applicant therefore
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`could have simply said, “allowing a plurality of lists of favorite channels to be
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`defined.”
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`57. The specification of the ’930 Patent states in column 20 that “[t]he final
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`steps of the favorite setup wizard, illustrated in FIGS. 17g and 17h, allow a name
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`1720 and image 1730 to be assigned to the favorites entry.”
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`’930 Patent at 20:19-22 & FIGs. 17g & 17h.
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`58. Based on this disclosure, one of ordinary skill in the art would understand
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`that the phrase “allowing a plurality of lists of favorite channels to be defined for
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`display in a display of the hand held device” as used in claim 1 involves providing
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`the user with an ability to define at least one attribute concerning how the favorite
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`channel list is displayed in the remote’s display.
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`59. Realistic does not describe a remote that permits “a plurality of lists of
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`favorite channels to be defined for display in a display of the hand held device.”
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`Realistic does not say anything about how a user can control any aspect about the
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`appearance of any channel from any favorite channel list in any mode.
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`60. The Realistic remote has a display that is limited to a single line of text of
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`about eight or nine characters.
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`61. The Petition alleges that favorite channel lists can be defined according to
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`Realistic, and the Petition also alleges that favorite channel lists can be displayed
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`according to Realistic. (Paper No. 1, Pet. at 24 – 25.) Even if those statements
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`were true, the Petition fails to specify how Realistic allows “lists of favorite
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`channels to be defined for display in a display of the hand held device.”
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`62. Paragraphs 17 – 23 and 37 of Mr. Geier’s declaration do not prove anything
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`with respect to Realistic’s disclosure of this claim limitation because those
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`paragraphs similarly analyze the relevant claim limitation as two isolated
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`fragments.
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`ii.
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`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 Associated with the Specified Mode for
`the Purpose of Tuning the at Least One of the Plurality of
`Home appliances to a Channel Represented on the at Least
`One of the Plurality of Lists of Favorite Channels
`63. The whereby clause of claim 1 limits claim 1 to remotes that allow users to
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`select a channel from a favorite channel list while that favorite channel list is
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`displayed on the remote such that the user’s selection then causes the remote to
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`tune a TV or other home appliance directly to the channel the user selected from
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`the displayed favorite channel list without requiring the user to step through all of
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`the channels on the favorite channel list.
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`64. The most obvious reason why Realistic does not disclose the limitations of
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`the whereby clause of claim 1 is because Realistic does not disclose displaying a
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`favorite channel list when any of the favorite channel lists are being used. (Ex.
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`1003, Realistic at 38 – 39.) As the Petition recognizes, Realistic only “discloses
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`that pressing the CHANNEL keys transmits the channels from the favorite channel
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`list.” (Paper No. 1, Pet. at 27 (citing Realistic at 39).)
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`65. The Board appears to recognize Realistic’s failure to teach this limitation.
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`The Board said in its Decision to Institute, “Although a channel number is not
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`shown in Realistic in the illustrated step 2 of using the favorite-channel feature
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`(reproduced supra), when the remote transmits the command code (channel
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`number) to the device, one would not necessarily draw the inference that the
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`channel number is not displayed when the command code is transmitted.” (Paper
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`No. 9, Decision to Institute at 9 (P.T.A.B. Jan. 6, 2015).)
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`66. Because Realistic does not disclose the ability to display a favorite channel
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`list when the favorite channel lists are being used, Realistic does not disclose a
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`remote that permits a user to “interact with the at least one of the plurality of lists
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`when displayed in the display of the hand held device to cause the hand held
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`device to transmit one or more command codes to the at least one of the plurality
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`of home appliances associated with the specified mode for the purpose of tuning
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`the at least one of the plurality of home appliances to a channel represented on the
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`at least one of the plurality of lists of favorite channels.”
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`B. Evans
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`67. Evans also describes a remote of the type that required users to step through
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`channels one by one, as explained above. For example, the specification of Evans
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`states that the remote has “channel keys 20A and 20B which may be used to step
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`either down or up respectively to select a desired channel, station, or the like for a
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`particular device being controlled . . . .” (Ex. 1004, Evans at 4:11-14.)
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`i.
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`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 Associated with the Specified Mode for
`the Purpose of Tuning the at Least One of the Plurality of
`Home appliances to a Channel Represented on the at Least
`One of the Plurality of