Universal Remote Control, Inc. v.
`Universal Electronics Inc.
`
`IPR2014-01109 (USPN 7,831,930)
`
`Oral Hearing, September 2, 2015
`Judges Blankenship, Medley, and Capp
`
`Universal Electronics Exhibit 2070, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
`
`
`Universal Electronics Inc.
`
`IPR2014-01109 (USPN 7,831,930)
`
`Oral Hearing, September 2, 2015
`Judges Blankenship, Medley, and Capp
`
`Universal Electronics Exhibit 2070, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
`
`
`
`Overview
`
`Introduction to U.S. Patent No. 7,831,930
`Claim 1 of the ‘930 Patent
`Claim Construction
`Realistic and Evans Do Not Disclose All of the
`Limitations of Claim 1 of the ’930 Patent
`Petitioner Failed to Perform a Graham Factor Analysis
`and to Show Any Motivation to Combine
`Petitioner Has Not Met its Burden of Showing that
`Realistic is Prior Art
`Secondary Considerations of Non-Obviousness
`
`2
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`Introduction to the ’930 Patent
`
`“System and Method for
`Displaying a User Interface for
`a Remote Control Application”
`
`(Ex. 1001, ’930 Patent, Fig. 17a.)
`
`(’930 Patent, Ex. 1001, Abstract.)
`
`3
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`Introduction to the ’930 Patent
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`• Mode-specific favorite lists displayed as
`favorite pages on a display of a hand held
`device.
`• Allows a user to specify a mode and to
`select for display one or more favorite
`channel lists associated with the chosen
`mode.
`
`4
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`Introduction to the ’930 Patent
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`• User can specify an appliance, user, or
`room mode and then select for display
`associated favorite channel lists.
`• User can view a favorite list on the display
`of the hand held device before selecting a
`favorite channel represented on the display.
`• The Board (Jeffery, Barry, and Courtenay III)
`previously allowed Claims 1-4 over Allport
`and Dunaway on May 17, 2010.
`
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`Introduction to the ’930 Patent
`
`• Selecting TV Mode
`
`(‘930 Patent, Ex. 1001, 22: 20 - 31, Fig. 14i.)
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`Introduction to the ’930 Patent
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`• Selecting TV Mode
`
`(‘930 Patent, Ex. 1001, 22:20 - 31, Fig. 14i.)
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`Introduction to the ’930 Patent
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`•
`
`•
`
`•
`
`TV Mode Device Control Page
`
`Associated Favorite List(s)
`
`Navigate Pages
`
`Favorite
`Lists Button/Key
`
`(‘930 Patent, Ex. 1001, 22:20 - 31, Fig. 19a-c.)
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`8
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`Introduction to the ’930 Patent
`
`PRESS
`FAVORITES
`
`Home Page
`
`SELECT
`TV
`
`TV Control Page
`
`TV List of
`Favorite
`Channels
`
`9
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`Claim 1 of the ’930 Patent
`
`1. An electronically readable media having embedded instructions executable
`by a processing device of a hand held device for displaying information to
`a user of the hand held device, the instructions performing steps
`comprising:
`allowing a plurality of lists of favorite channels to be defined for display in a
`display of the hand held device; and
`accepting input into the hand held device that specifies to the hand held device
`that the hand held device is to placed into a mode to control at least one
`of a plurality of home appliances and, in response, using the input to
`select at least one of the plurality of lists of favorite channels
`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.
`
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`Claim 1 of the ’930 Patent
`
`1. An electronically readable media having embedded instructions
`executable by a processing device of a hand held device for
`displaying information to a user of the hand held device,
`the instructions performing steps comprising:
`
`The preamble of Claim 1 requires instructions or software
`executable by a hand held device’s processor for displaying
`information to a user of the hand held device.
`
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`Claim 1 of the ’930 Patent
`
`allowing a plurality of lists of favorite channels to be defined for
`display in a display of the hand held device
`
`The first step of Claim 1 requires instructions or software for
`allowing a plurality of lists of favorite channels to be defined
`for display in a display of the hand held device.
`
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`Claim 1 of the ’930 Patent
`
`accepting input into the hand held device that specifies to the hand
`held device that the hand held device is to be placed into a
`mode to control at least one of a plurality of home appliances
`and, in response, using the input to select at least one of
`the plurality of lists of favorite channels
`
`The second step of Claim 1 requires accepting input from the
`user that specifies a mode (e.g., TV Mode), and, in response to
`or as a result of, that mode-initiating input, selecting at least
`one of the plurality of lists of favorite channels for display
`in the display of the hand held device.
`
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`Claim 1 of the ’930 Patent
`
`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.
`
`The third step (whereby clause) of Claim 1 requires:
`– The user interacting with a list of favorite channels when
`displayed in the display of the hand held device, and,
`more specifically, a channel represented on the displayed list
`of favorite channels; and
`
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`Claim 1 of the ’930 Patent
`
`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.
`
`The third step (whereby clause) of Claim 1 also requires:
`– The user’s interaction (i.e., channel selection) causes the hand
`held device to transmit command codes to the controlled
`appliance to tune it to the channel that was selected by the
`user from the displayed favorites list.
`
`15
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`Claim 1 of the ’930 Patent
`
`The ‘930 Patent teaches that a list of favorite channels with channels
`represented on the list is displayed in the display of the hand held device:
`
`– “During execution of the favorites setup wizard, the current list of frequently
`accessed channels may appear thereby allowing rapid, semi-automatic
`programming of favorites buttons effected by picking channels from the
`displayed list.” (‘930 Patent, Ex. 1001, 25:47-51.)
`– “The favorites page display may also be adaptive. In this regard, the
`remote control application . . . may organize the display of the favorites
`page as a function of frequency of channel access. The most oft selected
`channels may be displayed on the top of the list.” (Id., 26:4:8; See also
`Claim 2.)
`– “There may also be a setting in the interface to only allow . . . channel
`access through favorites (and not by channel up/down or numeric
`keypad entry . . . .” (Id., 25:38-40.)
`– “to thereby order the lists of favorite channels when they are displayed
`in the display of the hand held device.” (‘930 Patent PH, May 8, 2006
`Response, Ex. 1002 at 11 (434).)
`
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`Claim 1 of the ’930 Patent
`
`The ‘930 Patent teaches that a favorite list with represented
`channels is defined for display in the display of the hand
`held device:
`– Page Table. As illustrated in exemplary Table 4, the page
`table contains data fields for use in describing the attributes
`of each display page of the remote control application:
`
`(‘930 Patent, Ex. 1001,
`27:47-51,Table 4; See
`also id., Table 15.)
`
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`Claim 1 of the ’930 Patent
`
`The ‘930 Patent teaches that a user’s interaction causes the hand held
`device to transmit command codes to the controlled appliance to tune
`the device to the channel that was selected by the user from the
`displayed list of favorite channels:
`
`– “Favorites Page(s). The remote control application may provide one or
`more favorites pages containing button icons which the user may
`configure for direct access to his favorite programming (e.g., [] to
`cause the transmissions of commands to cause a device to tune
`to a favorite channel . . . .” (‘930 Patent, Ex. 1001, 19:25-30.)
`– “Furthermore, since favorites may actually perform several functions
`(associating a readily identifiable logo with a network channel and/or
`sending IR or other commands to direct a device to the proper
`channel) . . . .” (Id., 25:23-27.)
`– “. . . the user holding down a channel logo (i.e., a button used to tune
`to a channel) . . . .” (Id., 33:66-34:1.)
`– “whereby subsequent activation by the user of the ‘ESPN’ logo icon
`will cause the transmission of command(s) to tune the target
`device to the correct channel assignment.” (Id., 34:34-37.)
`
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`Claim 1 of the ’930 Patent
`
`1. An electronically readable media having embedded instructions executable
`by a processing device of a hand held device for displaying information to
`a user of the hand held device, the instructions performing steps
`comprising:
`allowing a plurality of lists of favorite channels to be defined for display in a
`display of the hand held device; and
`accepting input into the hand held device that specifies to the hand held device
`that the hand held device is to placed into a mode to control at least one
`of a plurality of home appliances and, in response, using the input to
`select at least one of the plurality of lists of favorite channels
`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.
`
`19
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`Claim Construction – “interact with”
`
`Patent Owner’s Construction
`
`NN
`
`Petitioner’s Construction
`
`select a channel from
`
`?
`
`20
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`Claim Construction – “interact with”
`
`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.
`The whereby clause requires the following:
`– (1) The user interacting or selecting a channel from a list of
`favorite channels when displayed in the display of the hand held
`device;
`– (2) The selected channel is represented or depicted on the list of
`favorite channels that is displayed in the display of the hand held
`device; and
`– (3) The user’s interaction (i.e., channel selection) causes the hand
`held device to transmit command codes to the controlled
`appliance to tune it to the channel that was selected by the user
`from the displayed list of favorite channels.
`
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`Claim Construction – “interact with”
`
`Petitioner ignores the “user interface” invention of the ‘930 Patent and
`the ‘930 Patent’s definition of “interact with”:
`
`– “This invention relates generally to hand-held electronic devices,
`and more particularly, relates to a user interface for an universal
`remote control application resident on the hand held electronic
`device.” (‘930 Patent, Ex. 1001, 1:13-16.)
`– “The graphical user interface may be used. . . to access favorites.”
`(Id., Abstract.)
`– “The presentation engine 1108 manages the user interface that
`users interact with to command the operation of the remote control
`application, for example, to cause the transmission of commands to
`devices.” (Id.,7:61-64.)
`– “By interacting with the wheel 110, the user may select a primary
`device 112 to initiate setup, . . . .” (Id., 13:54-56.)
`
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`Claim Construction – “interact with”
`
`The incorporated Haughawout application also supports the proper
`construction of “interact with”:
`– “A user may interact with the electronic program guide to
`change the program schedule information that
`is displayed
`and/or to transmit one or more command codes to a target
`appliance.” (US 2003/0117427, Abstract.)
`– “To provide a means by which an consumer can interact with
`the device 10, the device 10 is preferably provided with software
`that implements a graphical user interface.” (Id., [23].)
`– “To cause the device 10 to perform an action, the device 10 is
`adapted to be responsive to events, such as a sensed consumer
`interaction with one or more keys on the key matrix, a sensed
`consumer interaction with the touch screen display, . . . .”
`(Id.,
`[20].)
`
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`Claim Construction – “interact with”
`
`Graphical user interface for a user to “interact with”
`a displayed list of favorite channels and a channel represented on the list
`(‘930 Patent, Ex. 1001, Fig. 17a)
`
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`Claim Construction – “a channel represented on the at
`least one of the plurality of lists of favorite channels”
`
`Patent Owner’s Construction
`
`NN
`
`Petitioner’s Construction
`
`a channel depicted on the display of
`the remote control or hand-held
`device [when the user interacts with
`the displayed list of favorite
`channels]
`
`a channel that is a member of the
`list of favorite channels
`
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`Claim Construction – “a channel represented on the at
`least one of the plurality of lists of favorite channels”
`
`Petitioner’s arguments are contradicted by Claim 1 which
`clearly shows that its position is incorrect:
`– “One cannot display a channel on a list. A list is an object that
`can be displayed on a display, but nothing is displayed on a list.
`A channel can be a member of a list, i.e., it can be ‘represented
`on’ a list, but it cannot be ‘displayed’ on a list.” (Pet. Reply,
`Paper No. 26 at 7.)
`
`– “Claim 1 only requires that the appliance is tuned ‘to a channel
`represented on’ the list, not the ‘selected channel.’” (Id. at 8.)
`
`– “The claim does not require that the display in this limitation be
`the same as in a subsequent limitation in the claim. It is
`consistent with the language of the claim that the list displayed
`in the ‘allowing’ limitation is different from that displayed in the
`whereby clause.” (Id. at 13.)
`
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`Claim Construction – “a channel represented on the at
`least one of the plurality of lists of favorite channels”
`
`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.
`
`Based on its antecedent basis, “the at least one of the plurality of lists
`of favorite channels” recited in the whereby clause refers back to “the
`at least one of the plurality of lists” that is “displayed in the display”
`when the user interaction occurs.
`A channel depicted on the list that is displayed in the display of the
`hand held device is consistent with the specification and the claim.
`Any construction other than “a channel depicted on the display . . .”
`would render the term “represented on” superfluous.
`
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`Realistic and Evans Do Not Disclose All of the
`Limitations of Claim 1 of the ‘930 Patent
`
`Realistic
`
`U.S. Patent No. 4,825,200 (Evans)
`
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`Realistic and Evans Do Not Disclose All of the
`Limitations of Claim 1 of the ‘930 Patent
`
`Realistic and Evans do not disclose instructions or software that
`perform the following steps:
`– Allowing a plurality of lists of favorite channels to be defined for display
`in a display of the hand held device;
`– Accepting a user’s mode-initiating input to also select at least one of
`the plurality of lists of favorite channels for display in the display of the
`hand held device;
`– Permitting a user’s interaction with a list of favorite channels when
`displayed in the display of the hand held device;
`– Permitting a user’s interaction with a channel represented on the
`displayed list of favorite channels; and
`– The user’s interaction (i.e., channel selection) causing the hand held
`device to transmit command codes to the controlled appliance to tune
`the device to the channel that was selected by the user from the
`displayed list of favorite channels.
`
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`Realistic and Evans Do Not Disclose All of the
`Limitations of Claim 1 of the ‘930 Patent
`
`Petitioner fails to argue that Realistic and Evans disclose certain
`limitations of Claim 1.
`
`Petitioner’s expert fails to opine that Realistic and Evans disclose
`certain limitations of Claim 1.
`
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`Petitioner Failed to Perform a Graham Factor Analysis
`and to Show Any Motivation to Combine
`
`In assessing obviousness, one must:
`1. Determine the scope and content of the prior art;
`2. Ascertain the differences between the prior art and the claimed
`subject matter;
`3. Resolve the level of ordinary skill in the pertinent art; and
`4. Consider secondary considerations of non-obviousness.
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
`
`Petitioner never identified any differences between Realistic or Evans
`and the limitations of Claim 1.
`A petitioner’s failure to identify the differences between the claimed
`subject matter and the prior art has been a basis for the Board failing to
`institute. See, e.g., Eizo Corp. v. Barco N.V., IPR2014-00358, Paper
`No. 11, Ex. 2003 at 29 (P.T.A.B. July 23, 2014).
`
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`Petitioner Failed to Perform a Graham Factor Analysis
`and to Show Any Motivation to Combine
`
`URC’s Petition bases its request for inter partes review on a combination of
`Realistic and Evans.
`– E.g., underneath a heading that reads “Claim 1 is unpatentable as obvious
`over Realistic in view of Evans under 35 U.S.C. § 103(a),” the Petition
`states that “combining the references was obvious to skilled artisans at the
`time for the reasons discussed above at Section VI(A), and in more detail
`below.” (Petition, Paper No. 1 at 21; see id. at ii, iii, 5, 12.)
`In the Decision to Institute, the Board noted that “Petitioner, however, does not
`allege there is a ‘motivation to combine’ the teachings of Realistic and Evans.”
`(Decision to Institute, Paper No. 9 at 10 (P.T.A.B. Jan. 6, 2015).)
`– URC’s expert did not articulate any motivation to combine Realistic and
`Evans.
`– This failure is fatal to Petitioner’s patentability challenge.
`– URC ignores the Board’s finding that URC failed to identify any motivation to
`combine. (See URC Reply, Paper No. 26 at 13 – 14.)
`
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`Petitioner Failed to Perform a Graham Factor Analysis
`and to Show Any Motivation to Combine
`
`In the Decision to Institute, the Board cited KSR International Co. v.
`Teleflex Inc. for the proposition of applying a known technique from
`Evans to Realistic. (See Decision to Institute, Paper No. 9 at 10
`(P.T.A.B. Jan. 6, 2015).)
`– Petitioner did not assert this theory in its petition.
`– Petitioner and its expert have not even alleged, much less shown,
`that any aspect of Evans amounted to a “known technique.”
`• Even if they had, “known techniques” may not serve as prior art in
`inter partes reviews. 35 U.S.C. § 311(b).
`In KSR, immediately after the Supreme Court discussed applying a
`known technique to a prior art reference, the Supreme Court contrasted
`that scenario with the scenario where multiple pieces of specific prior
`art are combined (e.g., the Realistic document and Evans) in an effort
`to show that a patent claim is obvious. KSR, 550 U.S. 398, 417 – 18
`(2007). With respect to the latter scenario, courts must “determine
`whether there was an apparent reason to combine the known elements
`in the fashion claimed by the patent at issue.” Id. at 418.
`
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`Petitioner Has Not Met its Burden of Showing that
`Realistic is Prior Art
`
`A copyright notice, on its own, does not establish that the Realistic
`document is a “printed publication” and, more specifically, that the
`Realistic document was disseminated or made available to the relevant
`public. (See, e.g., Paper No. 9, Decision to Institute at 6 (P.T.A.B. Jan.
`6, 2015) (“we agree with Patent Owner to the extent that a copyright
`notice alone does not establish that a document has been published, at
`any time”).)
`The burden to prove status of prior art rests with party challenging
`patentability. See e.g., Therasense, Inc. v. Becton, Dickinson & Co.,
`560 F. Supp. 2d 835, 864 (N.D. Cal. 2008) (citing Mahurkar v. C.R.
`Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996)).
`“The statutory phrase ‘printed publication’ has been interpreted to mean
`that before the critical date the reference must have been sufficiently
`accessible to the public interested in the art; dissemination and public
`accessibility are the keys to the legal determination whether a prior art
`reference was ‘published.’” See In re Klopfenstein, 380 F.3d 1345,
`1347 (Fed. Cir. 2004); see also Kyocera Wireless Corp. v. Int'l Trade
`Comm'n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).
`
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`Secondary Considerations of Non-obviousness
`
`Law
`– Generally
`– Burdens
`Licensing of the ‘930 Patent and Commercial Acquiescence
`The Commercial Success of the ‘930 Patent
`Petitioner Fails to Rebut and Petitioner’s Expert Fails to
`Address the Secondary Considerations of Non-obviousness
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`Secondary Considerations of Non-obviousness:
`Law
`
`“Such secondary considerations as commercial success, long felt but
`unsolved needs, failure of others, etc., might be utilized to give light to
`the circumstances surrounding the origin of the subject matter sought to
`be patented.” Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`“A prima facie case of nexus is established when the patentee shows
`both that there is commercial success, and that the product that is
`commercially successful is the invention disclosed and claimed in
`the patent.” Omron Oilfield & Marine, Inc. v. MD/TOTCO, IPR 2013-
`00265, Paper No. 11 at 14 (P.T.A.B. Oct. 31, 2013) (citing In re GPAC
`Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)) (emphasis added).
`
`“Testimony that a product was successful due to the patented
`features supports a finding of nexus.” Id. (citing Power Integrations,
`Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed.
`Cir. 2013)) (emphasis added).
`
`•
`
`•
`
`36
`
`Universal Electronics Exhibit 2070, Page 36
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
`
`
`
`Secondary Considerations of Non-obviousness:
`Law Regarding Burdens
`
`“Petitioner does not rebut any of this evidence. This lack
`of a rebuttal serves to bolster the case for commercial
`success.” Omron Oilfield & Marine, Inc. v. MD/TOTCO,
`IPR 2013-00265, Paper No. 11 at 14 (P.T.A.B. Oct. 31,
`2013)(citing Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d
`1294, 1310-11 (Fed. Cir. 2010)) (emphasis added).
`
`37
`
`Universal Electronics Exhibit 2070, Page 37
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
`
`
`
`Secondary Considerations of Non-obviousness:
`The Commercial Success of the ‘930 Patent
`
`Millions in licensing royalties from Logitech through 2013.
`Decl., Ex. 2030 ¶ 17.)
`
`(Ammari
`
`leader in consumer
`Licensee Logitech has been the market
`aftermarket remote controls since 2007 and has been a licensee
`of the ‘930 Patent since it was issued. (Id. ¶ 20.)
`
`Since 2007 sales of Licensee Logitech’s remote controls have
`accounted for more than approximately $100 million in worldwide,
`annual sales. (Id.) A considerable portion of those remote controls
`are covered by the ‘930 Patent (Id.; See also id. ¶¶ 13-19, 21.)
`
`UEI’s Nevo remote controls for custom installation are covered by
`the ‘930 Patent and realized approximately $17 million in sales
`from 2005 to 2010. (Id. ¶ 32; See also Ex. 2043.)
`
`38
`
`Universal Electronics Exhibit 2070, Page 38
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
`
`
`
`Secondary Considerations of Non-obviousness:
`The Commercial Success of the ‘930 Patent—Logitech Products
`
`Mr. Ammari testified that the Logitech Harmony remote control products are
`covered by the ‘930 Patent. (Ammari Decl., Ex. 2030 ¶¶ 13-21.)
`
`that culminated in the second
`lawsuit
`infringement
`During the patent
`Logitech license, UEI and its attorneys served claim charts pursuant to the
`N.D. Cal. local patent rules that show on an element-by-element basis that
`the Logitech Harmony remotes are covered by the ‘930 Patent (Ex. 2032;
`See also Ammari Decl., Ex. 2030 ¶¶ 10-11.) Logitech’s manuals show that
`the Logitech Harmony remotes are covered by the ‘930 Patent.
`(See Exs.
`2034-2038.)
`
`lists as “one of the
`Logitech touted the ability to create favorite channel
`coolest features on Logitech Harmony remote controls.” (Ex. 2040.)
`
`Each of the above, alone, is evidence of nexus, i.e., that the
`commercially successful Logitech Products are covered by the ‘930
`Patent
`
`39
`
`Universal Electronics Exhibit 2070, Page 39
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
`
`
`
`Secondary Considerations of Non-obviousness:
`The Commercial Success of the ‘930 Patent—UEI Products
`
`Mr. Ammari testified that UEI’s Nevo-branded remote control products
`are covered by the ‘930 Patent. (Ammari Decl., Ex. 2030 ¶¶ 22-25; See
`also Ex. 2042.)
`This alone is evidence of nexus, i.e., that the commercially
`successful UEI Products are covered by the ‘930 Patent
`
`40
`
`Universal Electronics Exhibit 2070, Page 40
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
`
`
`
`Secondary Considerations of Non-obviousness: Petitioner Fails to
`Rebut the Secondary Considerations of Non-obviousness
`
`•
`
`•
`
`“Once the patentee demonstrates a prima facie nexus, the burden
`of coming forward with evidence in rebuttal shifts to the
`challenger.” Omron Oilfield & Marine,
`Inc. v. MD/TOTCO,
`IPR
`2013-00265, Paper No. 11 at 14 (P.T.A.B. Oct. 31, 2013) (citing
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387,
`1393 (Fed. Cir. 1988)) (emphasis added).
`
`“Petitioner does not rebut any of this evidence. This lack of a
`rebuttal serves to bolster the case for commercial success.” Id.
`(citing Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310-11
`(Fed. Cir. 2010)) (emphasis added).
`
`41
`
`Universal Electronics Exhibit 2070, Page 41
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
`
`
`
`Secondary Considerations of Non-obviousness:
`Petitioner’s Expert Failed to Address the Secondary Considerations of
`Non-obviousness
`
`Petitioner's expert Mr. Geier did not opine on secondary
`considerations in his declaration.
`(See generally, Geier Decl., Ex.
`1008.)
`
`Petitioner’s expert did not submit a reply declaration on secondary
`considerations.
`
`42
`
`Universal Electronics Exhibit 2070, Page 42
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
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