Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 1 of 46 Page ID #:991
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`UNIVERSAL ELECTRONICS, INC.,
`
`Plaintiff,
`
`
`
`v.
`
`
`PEEL TECHNOLOGIES, INC.,
`
`Defendant.
`
`
`PEEL TECHNOLOGIES, INC.,
`
`Counterclaim Plaintiff,
`
`
`v.
`
`
`UNIVERSAL ELECTRONICS, INC.,
`
`Counterclaim Defendant.
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`
`CASE NO. SACV 13-01484 AG (JPRx)
`
`
`CLAIM CONSTRUCTION ORDER
`
`
`
`Universal Electronics Exhibit 2016, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
`
`

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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 2 of 46 Page ID #:992
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`
`BACKGROUND
`
`
`Plaintiff/Counterclaim-Defendant Universal Electronics, Inc. (“UEI”) alleges that
`Defendant/Counterclaim-Plaintiff Peel Technologies, Inc. (“Peel”) has infringed U.S. Patent
`Nos. 6,938,101 (“the ‘101 Patent”), 7,218,243 (“the ‘243 Patent”), 7,589,642 (“the ‘642
`Patent”), 7,831,930 (“the ‘930 Patent”), 7,889,112 (“the ‘112 Patent”), 7,782,309 (“the ‘309
`Patent”), 7,821,504 (“the ‘504 Patent”), 7,821,505 (“the ‘505 Patent”), and 7,999,794 (“the ‘794
`Patent”) (collectively, “UEI’s Patents-in-Suit”). Peel alleges that UEI has infringed U.S. Patent
`No. 6,879,351 (“the ‘351 Patent”).
`
`The parties dispute the meaning of eight claim terms, and have agreed to the meaning of
`six claim terms. (Supp. Joint Claim Constr. Chart, Dkt. No. 50 2.) The briefs and presentation
`materials submitted by both parties were clear and helpful. In this Order, the Court determines
`the proper claim constructions of each disputed term.
`
`
`
`
`
`
`LEGAL STANDARD
`
`
`Claim construction is an interpretive issue “exclusively within the province of the court.”
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). It begins with an analysis of
`the claim language itself, Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323,
`1331 (Fed. Cir. 2001), since the claims define the scope of the patent right. Phillips v. AWH
`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). In construing the claim language, the Court
`begins with the principle that “the words of a claim are generally given their ordinary and
`customary meaning.” Id. (internal quotation marks omitted).
`
`The ordinary and customary meaning of a claim term is the “meaning that the term would
`have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313.
`“[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context
`of the particular claim in which the disputed term appears, but in the context of the entire
`patent.” Id. Where the patent itself does not make clear the meaning of a claim term, courts may
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`Universal Electronics Exhibit 2016, Page 2
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 3 of 46 Page ID #:993
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`look to “those sources available to the public that show what a person of skill in the art would
`
`have understood the disputed claim language to mean,” including the prosecution history and
`“extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and
`the state of the art.” Id. at 1314.
`
`“In some cases, the ordinary meaning of claim language as understood by a person of
`skill in the art may be readily apparent even to lay judges, and claim construction in such cases
`involves little more than the application of the widely accepted meaning of commonly
`understood words.” Id. “In such circumstances general purpose dictionaries may be helpful.”
`Id. In other cases, claim terms will not be given their ordinary meaning because the
`specification defines the term to mean something else. Novartis Pharms. Corp. v. Abbott Labs.,
`375 F.3d 1328, 1334 (Fed. Cir. 2004); Kumar v. Ovonic Battery Co., Inc., 351 F.3d 1364, 1368
`(Fed. Cir. 2003). For the specification to define a term to mean something other than its
`ordinary meaning, it must set out its definition in a manner sufficient to provide notice of that
`meaning to a person of ordinary skill in the art. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`
`
`ANALYSIS
`
`1.
`
`PROCEDURAL HISTORY
`
`UEI filed this suit on September 23, 2013, alleging infringement of the ‘101 Patent, the
`
`‘243 Patent, the ‘642 Patent, the ‘930 Patent, and the ‘112 Patent. (Compl., Dkt. No. 1.) Later,
`the USPTO completed the substantive portion of its reexamination and confirmed the validity of
`three additional patents owned by UEI: the ‘309 Patent, the ‘504 Patent, and the ‘505 Patent.
`Those three patents and the ‘794 Patent share the same inventor and specification, and are
`collectively referred to as the “Janik Patents.” On April 15, 2014, UEI added the Janik Patents
`to this lawsuit. (FAC, Dkt. No. 44.) On April 21, 2014, Peel asserted the ‘351 Patent against
`UEI in this lawsuit by way of counterclaim, and voluntarily dismissed the separate suit it had
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`Universal Electronics Exhibit 2016, Page 3
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 4 of 46 Page ID #:994
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`2.
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`filed concerning the ‘351 Patent. (Answer to FAC, Dkt. No. 45; Notice of Voluntary Dismissal,
`
`Peel Techs., Inc. v. Universal Elecs., Inc., SACV 14-0439-AG (C.D. Cal.), Dkt. No. 12.) Thus,
`this lawsuit involves nine UEI patents and one Peel patent.
`
`THE PARTIES AND ACCUSED PRODUCTS
`
`Peel provides “software products called the ‘TV App,’ ‘WatchON App,’ and ‘Peel Smart
`
`Remote App,’ which are applications that can be downloaded and used with various mobile
`devices, including Android mobile phones and tablets such as the Samsung Galaxy” line of
`products. (UEI’s Opening Claim Constr. Br., Dkt. No. 51 1.) Peel also sells a “product called
`the ‘Peel Universal Remote,’ consisting of a Peel ‘Fruit’ hardware device and software [] for use
`with [Apple’s] iOS operating system.” (UEI’s Opening Claim Constr. Br., Dkt. No. 51 1.) The
`Peel “Fruit” is an infrared (“IR”) hardware component that allows Apple products lacking a
`built-in IR transmitter (sometimes called a “blaster”) to emit IR signals. (UEI’s Opening Claim
`Constr. Br., Dkt. No. 51 1.) IR signals are commonly used by televisions, cable boxes, DVD
`players, and other audiovisual devices. Peel’s applications display icons, and receive inputs via
`a touch screen. (UEI’s Opening Claim Constr. Br., Dkt. No. 51 1.)
`UEI alleges that Peel has a web page, help.peel.com/forums, dedicated to instructing end-
`users how to configure and use the accused Peel products in an infringing manner. (FAC, Dkt.
`No. 44 18.)
`Peel alleges that UEI infringes the ‘351 Patent through the use and sale of remote
`controls. (Am. Answer and Countercl., Dkt. No. 45 20.) UEI sells its products to some of the
`largest original equipment manufacturers in the consumer electronics and personal computing
`fields, including Sony, Panasonic, and Toshiba, as well as to multiple system operators in the
`cable and satellite markets, including Comcast, DirecTV, and Dish Network. (Am. Answer and
`Countercl., Dkt. No. 45 20.)
`Peel alleges that documentation accompanying the accused UEI products and UEI’s
`websites (including uei.com, urcsupport.com, and oneforall.com) provide step-by-step
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`Universal Electronics Exhibit 2016, Page 4
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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 5 of 46 Page ID #:995
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`instructions on how an end-user should configure and use the accused UEI products in a manner
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`that directly infringes the ‘351 Patent. (Am. Answer and Countercl., Dkt. No. 45 21.)
`
`3.
`
`AGREED TERMS
`The parties agreed to the construction of six terms:
`
`
`Patent/Claim
`
`Term
`
`Agreed Construction
`
`‘101 Patent
`claim 6
`
`mark-up language formatted page
`tag
`
`an element of a mark-up
`language formatted page
`including a start tag, at least the
`first and second data fields, and
`an end tag
`
`a non-moving contact with a
`surface at a location
`
`static touch
`
`‘504 Patent
`claims 1 and 8
`
`‘930 Patent
`claim 1
`
`in response, using the input to
`select at least one of the plurality of
`lists of favorite channels
`
`the mode specifying input
`automatically selects at least one
`of the favorite channels lists
`
`‘243 Patent
`claims 1 and 8
`
`control codes to which the
`appliance is adapted to respond
`
`‘112 Patent
`claims 1 and 2
`
`keycode link information
`
`‘351 Patent
`claims 1 and 18
`
`associating/associate the first one of
`the plurality of user input classes
`with the first one of the plurality of
`second/target devices
`
`more than one control code to
`which the appliance is adapted
`to respond
`
`data that defines a relationship,
`distinct from a link between a
`physical/soft key and a function
`to be performed
`
`creating an association between
`the first one of the plurality of
`user input classes with the first
`one of the plurality of
`second/target devices
`
`(Joint Claim Constr. Chart, Dkt. No. 49 2; Supp. Joint Claim Constr. Chart, Dkt. No. 50 2.)
`
`
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`4
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`Universal Electronics Exhibit 2016, Page 5
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
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`These constructions will bind the parties. See MyMail, Ltd. v. Am. Online, Inc., 476 F.3d
`
`1372, 1377-78 (Fed. Cir. 2007) (rejecting appellate challenge to claim construction agreed to by
`party in district court).
`
`‘351 PATENT
`
`4.
`
`
`
`‘351 Patent Overview
`
`4.1
`
`Peel asserts claims 1, 2, 6-8, 18, and 21 of the ‘351 Patent. Those claims cover
`programming methods for remote controls that operate appliances such as televisions, DVD
`players, and VCRs. (‘351 Patent Fig. 1, 2:66-3:22.) The ‘351 Patent simplifies programming
`by grouping buttons into classes according to function. Examples are power class, channel
`changing class, and volume changing class. By programming a single button from a class to
`operate a particular device, the other buttons in the same class are automatically programmed to
`operate the same device, without needing to separately program all of the buttons on the remote
`to operate that same device. (‘351 Patent 2:5-18, 4:16-5:25, Figs. 2, 3.)
`For example, by programming the remote Channel Up button to control a user’s TV, the
`other buttons in the channel changing class (Channel Down, Number Buttons (0-9), Previous
`Channel, TV/VCR), are also programmed to control the TV:
`
`
`(‘351 Patent Fig. 2.)
`
`
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`Universal Electronics Exhibit 2016, Page 6
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`Figure 5 of the ‘351 Patent shows how to program a class of buttons. First, the user
`
`pushes a device button (such as the VCR button). Second, the user pushes a button for entering
`a programmed association mode. Third, the user pushes one button in the class to be associated
`with the device (such as the Play button). The remote control then uses a class table to map the
`button press information to the relevant classification code, thus telling the system which class
`the pressed button is in. The classification code is then mapped by a target table that tells the
`remote which default device has been selected for the particular class of commands. (‘351
`Patent 7:13-19, Fig. 5.)
`In other words, by making this association between a class and a target device, all buttons
`in the class are mapped to the given target device. A user can then press any other button within
`the same class—referred to as the “fourth user input” in asserted claims 1 and 18—and that
`button will control the previously selected target device. (‘351 Patent 13:52-16:10.)
`
`4.2
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`‘351 Patent Disputed Terms
`
`
`
`The parties dispute the construction of one limitation in the ‘351 Patent. (Supp. Joint
`Claim Constr. Chart, Dkt. No. 50 10.) The asserted claims, with disputed limitations in bold,
`read as follows:
`
`
`1.
`A method of transmitting information from a first device to a second
`device, comprising:
`receiving a first user input at the first device, the first user input indicating a
`first one of a plurality of second devices;
`
`receiving, subsequent to the first user input, a second user input at the first
`device, the second user input indicating that a programmed association mode has
`been selected;
`
`receiving, subsequent to the second user input at the first device, a third
`user input at the first device, the third user input belonging to a first one of a
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`Universal Electronics Exhibit 2016, Page 7
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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 8 of 46 Page ID #:998
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`plurality of user input classes;
`
`
`associating the first one of the plurality of user input classes with the first
`one of the plurality of second devices;
`
`receiving, subsequent to the third user input at the first device, a fourth user
`input at the first device, the fourth user input belonging to the first class;
`identifying one of a plurality of sets of information which is associated
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`with the first class;
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`looking up at least one datum in the identified set of information; and
`transmitting the datum;
`wherein the third and fourth user inputs are different from each other.
`
`
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`18. An article of manufacture, comprising a machine readable medium upon
`which is included instructions which when processed by the machine will cause
`the machine to receive a first user input, the first user input indicating a first one of
`a plurality of target devices; receive, a second user input, the second user input
`indicating that a programmed association mode has been selected; receive, a third
`user input, the third user input belonging to a first one of a plurality of user input
`classes; associate the first one of the plurality of user input classes with the first
`one of the plurality of target devices; receive a fourth user input the fourth user
`input belonging to the first class; identify one of a plurality of sets of
`information which is associated with the class; look up at least one datum in the
`identified set of information; and transmit the datum to the first one of the plurality
`of target devices.
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`Universal Electronics Exhibit 2016, Page 8
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
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`

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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 9 of 46 Page ID #:999
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`4.2.1 “identify/identifying one of a plurality of sets of information which is
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`associated with the first class” (‘351 Patent, claims 1 and 18)
`
`
`
`UEI’s Proposed Construction
`
`Peel’s Proposed Construction
`
`using the user input class to locate the
`appropriate control code
`
`Alternatively,
`
`using the user input class to locate the
`appropriate collections of control information
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`Plain and ordinary meaning.
`
`Alternatively,
`
`identify/identifying one of a plurality of
`collections of [control information] which
`is associated with the first class
`
`(Supp. Joint Claim Constr. Chart, Dkt. No. 50 10; UEI’s Resp. Br., Dkt. No. 56 10.)
`The key distinction between the parties’ proposed constructions is that Peel omits the use
`of a user input class in locating control information. Thus, the dispute revolves around the step
`of “identifying,” not the nature of the “sets of information.” UEI’s proposed construction
`requires the user input class to be used in locating the appropriate sets of control information,
`while Peel’s does not.
`
`Figure 5 shows the table structure for “determining which device is associated with the
`classification code and accessing the control code or codes needed to send the command
`indicated by a button press to the device which has a programmed association with the function
`class to which the button belongs.” (‘351 Patent 6:55-59, Fig. 5.) Thus, the embodiment shown
`in Figure 5 uses a particular process to determine which control codes are associated with each
`button. First, a look-up in the class table is performed to determine the class of buttons to which
`a pressed button belongs. Then, a look-up in the target table is performed to determine which
`target device is associated with that class of buttons. Then, a look-up is performed to retrieve
`the appropriate control codes. (‘351 Patent 6:49-59, Fig. 5 (showing “class table,” “target
`table,” and table containing control codes).)
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`Universal Electronics Exhibit 2016, Page 9
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
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`

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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 10 of 46 Page ID #:1000
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`(‘351 Patent Fig. 5.)
`But while this embodiment describes how a classification code can be used to access the
`target tables, which in turn provides access to control codes, the specification also contemplates
`bypassing the classification codes. For example, in an exemplary algorithm flow, element 612,
`which checks for a “priority press” (whether a default device has been assigned), precedes
`classification operation element 613. In the algorithmic step 613, “[i]f the programmed
`association feature is enabled, then software is executed 613 that sets the value of the variable
`Class to the result of the Classify function that is executed with an argument indicative of which
`button was pressed.” (‘351 Patent 9:6-8 (emphasis added).) The specification further explains
`the classification bypass feature: “[i]f the programmed association feature is active (and not
`bypassed) this classification is used as an index into a table with one entry per possible
`classification.” (‘351 Patent 7:43-46.) This is shown in Figure 6AB:
`
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`9
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`Universal Electronics Exhibit 2016, Page 10
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01109
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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 11 of 46 Page ID #:1001
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`In the bypass mode, when the programmed association feature is not active, the algorithm
`flow is depicted by Figure 6B, which is reproduced on the next page. As described in the
`specification: “[a] pointer to the A/V device currently programmed for this source slot is then
`looked up 623.” (‘351 Patent 9:26-28.) This pointer is an “associated” relationship in the
`language of the claim element: “one of a plurality of sets of information which is associated with
`the [first] class.” (‘351 Patent claims 1, 18.) If the pointer to a device exists, then “[a] decision
`is made 628 as to whether the function associated with the button which was pressed actually
`exists for the selected device.” (‘351 Patent 9:50-53.)
`Thus, once a device has been associated with a user input class, there exists “one of a
`plurality of sets of information” associated with that class. (‘351 Patent claims 1, 18.) That set
`is identified to see if the pressed button corresponds to an available function of the device. If the
`button/function exists for the pointed-to device, then “the control code for the selected device
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`10
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`Universal Electronics Exhibit 2016, Page 11
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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 12 of 46 Page ID #:1002
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`and function, which was stored in the universal remote control unit, is expanded (i.e.,
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`decompressed) 633, and then transmitted by an infrared transmitter which is part of the universal
`remote control unit 634.” (‘351 Patent 9:55-60.)
`
`(‘351 Patent Fig. 6B.)
`
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`11
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`Universal Electronics Exhibit 2016, Page 12
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`Case 8:13-cv-01484-AG-JPR Document 66 Filed 09/17/14 Page 13 of 46 Page ID #:1003
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`UEI’s construction does not account for this bypass mode. Thus, UEI’s construction
`requiring use of the user input class to identify control information would exclude a preferred
`embodiment. A construction that excludes a preferred embodiment “is rarely, if ever, correct
`and would require highly persuasive evidentiary support.” Vitronics Corp. v. Conceptronic,
`Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
`Accordingly, the Court adopts Peel’s proposal and construes “identify/identifying one of
`a plurality of sets of information which is associated with the first class” as “identify/identifying
`one of a plurality of collections of control information which is associated with the first class.”
`
`‘101 PATENT
`
`5.
`
`5.1
`
`‘101 Patent Overview
`
`
`
`
`UEI’s ‘101 Patent is directed to a handheld computing device with an infrared (“IR”)
`transmitter, a touchscreen, and a browser application capable of displaying a customizable
`“virtual remote control” interface for controlling consumer appliances, such as televisions and
`CD players. (‘101 Patent 15:45-61, Fig. 27.) The device uses the HyperText Mark-up
`Language (“HTML”), or a similar mark-up language, to format the display to look like a
`conventional remote. (‘101 Patent 16:46-61, 21:4-8, Fig. 12.)
`As shown in Figures 12 and 13, HTML uses structured “tags” (denoted by “<” and “>”)
`to define the format and functionality of information being displayed. (See also T. Berners-Lee
`& D. Connelly, Hypertext Markup Language – 2.0 (1995), Dkt. No. 52, Ex. 12 194, 197.)
`Figure 12 shows examples of how an anchor tag, denoted by the prefix “<A . . .>” and suffix
`“</A>,” can define a hyperlink, used to link from one page to another. (See Berners-Lee, Dkt.
`No. 52, Ex. 12 191, 204-05, 207-09 (“A hyperlink is a relationship between two anchors.”).)
`One example shown in the source code accompanying Figure 12 is:
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`12
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`<A href=“appliances.htm”>Appliances</A>
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`The “href” field contains the page being linked to (“appliances.htm”), and the “Appliances” text
`represents the hyperlink. (‘101 Patent Fig. 12.) A second example is:
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`<A href=“appliances.htm”><IMG border=0 height=25
`src=“index_files/Appliances.gif” width=25></A>
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`The code links to the same page in the first example, “appliances.htm,” but uses the image
`named “Appliances.gif” to represent the hyperlink. (‘101 Patent Fig. 12.)
`
`
`(‘101 Patent Fig. 12 (annotations added).)
`Such programming was well known in the art at the relevant time. (‘101 Patent 15:45-61
`(discussing “well-understood standardized set of HTML commands”); Oct. 4, 2004 Response to
`Non-Final Rejection, Dkt. No. 52, Ex. 7 139 (describing how the prior art used HTML to define
`the screen layout of a remote control).)
`The ‘101 Patent describes a type of HTML tag that serves as a hyperlink between a
`“virtual remote control” in a browser application and IR command codes transmitted to
`consumer appliances. (‘101 Patent 16:18-61, 18:8-21, Fig. 10c.) The ‘101 Patent describes the
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`general format of this “IROP” tag as follows:
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`<IROP KEY = “1-18, . . .”, LABEL = “function name” IMG = “file path”>
`
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`(‘101 Patent 16:23-24.) In that tag, the “KEY” field contains IR code data being linked to, much
`like the “href” field discussed above. (‘101 Patent 16:22-25.) The “LABEL” and “IMG” fields,
`respectively, define a label (required) and icon (optional) associated with the link that is
`displayed within the “virtual remote control.” (‘101 Patent 16:33-35.)
`Figure 27, shown below, illustrates an embodiment in which selecting or touching the
`“PBS” label will cause the remote control to issue the commands to cause the corresponding
`appliance to switch to channel 10.” (‘101 Patent 23:26-36, Fig. 27; see also ‘101 Patent 16:35-
`45 (describing example for tuning to the “ABC” channel).)
`
`
`(‘101 Patent Fig. 27 (annotations added).)
`The only claim at issue, claim 6, is directed to computer-readable media comprising two
`data fields. (FAC, Dkt. No. 44 5.) The first data field contains data for use in generating an
`infrared code to be transmitted, and the second data field contains information representing a
`label serving as a hyperlink. Thus, when the label is activated, the data from the first data field
`is used to generate an IR code, which may be transmitted to a TV or other appliance.
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`‘101 Patent Disputed Terms
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`5.2
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`The parties dispute the construction of three limitations in the ‘101 Patent. (Supp.
`Joint Claim Constr. Chart, Dkt. No. 50 4-7.) The asserted claim, with disputed limitations in
`bold, reads as follows:
`
`
`is stored a data structure
`6. A computer-readable media on which
`representative of a mark-up language formatted page tag, comprising:
`a first data field containing data for use in generating an infrared code to
`be transmitted upon activation of a hyperlink of a mark-up language formatted
`page including the mark-up language page tag when the mark-up language
`formatted page is displayed on a display; and
`a second data field containing information representing a label which is
`displayed as part of the mark-up language formatted page when the mark-up
`language formatted page is displayed on the display wherein a displayed label
`serves as the hyperlink which is activatable to initiate a use of the data in the
`first data field and a transmission of the infrared code.
`
`5.2.1 “data for use in generating an infrared code to be transmitted” (‘101
`Patent, claim 6)
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`
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`UEI’s Proposed Construction
`
`Peel’s Proposed Construction
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`data stored in the mark-up language page
`including information for use in generating
`an infrared code to be transmitted
`
`data stored in the mark-up language page
`including the infrared code to be
`transmitted
`
`(Supp. Joint Claim Constr. Chart, Dkt. No. 50 4.)
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`The dispute centers on “for use in generating an infrared code.” Both parties rely on the
`
`prosecution history. In a response to a final rejection, the applicant disputed the rejection of
`claims 12 and 13, arguing that the prior art lacked, among other things, a first data field
`containing either a pointer to data or the data itself for use in generating an infrared code to be
`transmitted. (Feb. 7, 2005 Resp. to Final Rejection, Dkt. No. 52, Ex. 10 174.)
`In response, the Examiner rejected the argument that pending claims 12 and 13 required
`embedded infrared code, and thus concluded that those claims were not distinct from the prior
`art:
`
`
`The claim language in 12 and 13 only necessitate[s] the HTML code to have [a]
`causal connection to activate the infrared code that generates the infrared
`command from the handheld remote control cited by Allport. As selectively
`quoted from claims 12, “retrieving a mark-up language formatted page containing
`both the information and a mark-up language formatted page tag including a
`pointer to data FOR USE in generating infrared code to be transmitted upon
`activation of a hyper link.” Nowhere does it recite that the source code that
`actually drives infrared signal must be embedded in the HTML. Again, the claim
`limitation only requires a causal relationship.
`
`(March 14, 2005 Advisory Action, Dkt. No. 52, Ex. 11 185 (emphasis in original).) In response,
`the applicant dropped pending claims 12 and 13. UEI now misinterprets this portion of the
`prosecution history. UEI argues that “the Examiner rejected any notion” that the now-asserted
`claim requires more than a causal connection. (UEI’s Responsive Br., Dkt. No. 56 1-2.) But,
`the Examiner rejected the notion that rejected and then abandoned claims 12 and 13 required
`more than a causal connection.
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`UEI further contends that:
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`What is important about that Office Action is the Examiner’s statement of reasons
`for allowing claim 6 at page 6, which Peel ignores. There, he concluded that the
`claim that included the “data for use in generating an infrared code” was allowable
`without any restrictions on where the infrared code was stored, or whether it was
`embedded or not.
`
`
`(UEI’s Responsive Br., Dkt. No. 56 2.) This is again incorrect. Claims 12 and 13 were actually
`broader claims that shared only some language with the narrower, now-asserted, claim 6. Read
`in the context of the preceding office actions and UEI’s responses, the Advisory Action shows
`that, unlike claims 12 and 13, the Examiner understood claim 10 (now claim 6) to require
`information about infrared codes be embedded within the mark-up language page itself.
`Thus, to overcome a rejection based on a prior art reference by Allport, UEI amended
`pending claim 10 (now claim 6) and argued that the amended limitation requires “storing
`within the HTML page itself what infrared code is to be transmitted.” (Dec. 21, 2004
`Response to Non-Final Rejection, Dkt. No. 52, Ex. 8 153-54 (emphasis added).) UEI repeatedly
`distinguished Allport because it lacks “any code embedded within the conventional GUI page.”
`(Feb. 7, 2005 Response to Final Rejection, Dkt. No. 52, Ex. 10 176) (emphasis in original).)
`UEI is precluded from recapturing scope it disclaimed to overcome Allport. Omega
`Eng’g, Inc., v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (doctrine of prosecution
`history disclaimer “preclude[s] patentees from recapturing through claim interpretation specific
`meanings disclaimed during prosecution”).
`While the prosecution history establishes that the data in the first field must