`Trials@uspto.gov
`571-272-7822
`
`Date Entered: December 16, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIVERSAL REMOTE CONTROL, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,1
`Patent Owner.
`____________
`
`Case IPR2014-01109
`Patent 7,831,930 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM A. CAPP, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Patent Owner represents that the owner of the patent and real party-in-
`interest is Universal Electronics, Inc. Paper 4. Office assignment records
`indicate, however, that U.S. Bank National Association is the owner of the
`patent. Patent Owner should update Office assignment records to be
`consistent with its representations made in Paper 4 of this proceeding.
`
`
`
`
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`IPR2014-01109
`Patent 7,831,930 B2
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`I. BACKGROUND
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`
`
`Petitioner Universal Remote Control, Inc. filed a request for inter
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`partes review of claim 1 of U.S. Patent No. 7,831,930 B2 (Ex. 1001, “the
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`’930 patent”) under 35 U.S.C. §§ 311–319. The Board instituted an inter
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`partes review of the claim on an asserted ground of unpatentability for
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`obviousness. Paper 9 (“Dec. on Inst.”).
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`Subsequent to institution, Patent Owner Universal Electronics Inc.
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`filed a Patent Owner Response in both unredacted (confidential) and revised
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`redacted forms (Papers 16 and 39 (“PO Resp.”)), along with a Motion to
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`Seal (Paper 18). Petitioner filed a Reply in both unredacted (confidential)
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`and revised redacted forms (Papers 26 and 40; (“Pet. Reply”)), along with a
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`Motion to Seal (Paper 24).
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`Patent Owner filed a Motion to Exclude (Paper 29; “PO Mot. to
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`Exclude”). Petitioner filed an Opposition to the Motion to Exclude (Paper
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`34; “Pet. Exclude Opp.”), and Patent Owner filed a Reply (Paper 35; “PO
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`Exclude Reply”). Petitioner filed a Motion to Exclude (Paper 30; “Pet. Mot.
`
`to Exclude”). Patent Owner filed an Opposition to the Motion to Exclude
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`(Paper 33; “PO Exclude Opp.”), and Petitioner filed a Reply (Paper 36, “Pet.
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`Exclude Reply”).
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`An oral hearing was held on August 19, 2015. A transcript of the
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`hearing is included in the record (Paper 44; “Tr.”).
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`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
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`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`2
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`IPR2014-01109
`Patent 7,831,930 B2
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`For the reasons that follow, we determine that Petitioner has not shown by a
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`
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`preponderance of the evidence that claim 1 of the ’930 patent is
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`unpatentable.
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`
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`A. Related Proceedings
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`According to Petitioner, the ’930 patent is involved in the following
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`lawsuits: Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
`
`SACV 13-00984 AG (JPRx) (C.D. Cal.); and Universal Electronics Inc. v.
`
`Peel Technologies, Inc., No. SACV 13-01484 AG (JPRx) (C.D. Cal.). Pet.
`
`1–2.
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`
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`
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`B. The ’930 Patent
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`The ’930 patent relates to a user interface for a universal remote
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`control application resident on a hand-held electronic device. Ex. 1001,
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`col. 1, ll. 13–16. In one embodiment of the invention, the remote control
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`application may provide one or more “favorites” pages containing button
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`icons which the user may configure for direct access to favorite
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`programming (e.g., to cause the transmissions of commands to cause a
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`device to tune to a favorite channel). Id. at col. 19, ll. 26–30. Figures 17a
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`and 17b are reproduced below.
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`Figures 17a and 17b illustrate exemplary steps to set up a remote
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`control application favorite-channel soft key. Id. at col. 2, ll. 30–31. An
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`exemplary “favorites” page is illustrated in Figure 17a, showing content
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`providers by their logos. Id. at col. 19, ll. 32–36. To configure or add a
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`“favorites” icon, one may tap customize icon 122 while a favorites page is
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`displayed and select “Add Favorite” or “Edit Favorite,” or may tap one of
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`the default icons that is displaying the wrench overlay, to indicate that it is
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`not yet configured. In either case, a “favorites” setup wizard may be
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`invoked to configure a “favorites” entry. Id. at col. 19, ll. 46–59. Once
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`enabled or set up, the button icons (Fig. 17a) provide direct access to
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`programming by causing the transmission of commands to tune a device to a
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`favorite channel. Id. at col. 19, ll. 26–30.
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`C. The Claim
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`
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`
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`The challenged claim is reproduced below.
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`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 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 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.
`
`
`
`Realistic
`
`Evans
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`
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`D. Asserted Prior Art
`
`Realistic, Owner’s Manual –
`Universal Remote Control Cat.
`No. 15–1903 (1989)
`US 4,825,200, Issued Apr. 25,
`1989
`
`Exhibit 1003
`
`Exhibit 1004
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`E. Asserted Ground of Unpatentability
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`We instituted inter partes review on the ground that claim 1 is
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`unpatentable under 35 U.S.C. § 103(a) over Realistic and Evans.
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`
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`II. ANALYSIS
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`A. Claim Interpretation
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`In an inter partes review, the Board construes claim terms in an
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`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
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`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
`
`The claim language should be read in light of the specification, as it would
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`be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci.
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`Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the
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`broadest reasonable meaning to the claim language, taking into account any
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`definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
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`575, 577 (Fed. Cir. 2002)). There is a “‘heavy presumption’ that a claim
`
`term carries its ordinary and customary meaning.” CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
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`The “ordinary and customary meaning” is that which the term would have to
`
`a person of ordinary skill in the art in question. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`
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`1. List
`
`Claim 1 contains the noun form of the word “lists.” Because we do
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`not find the ’930 patent to set forth or contain any special definition for the
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`term, we interpret “list” in accordance with its ordinary and customary
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`
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`meaning. A “list” may be defined as an “item-by-item series of numbers or
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`words, as the names of persons or things, written or printed one after the
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`other,” such as a “shopping list” or a “guest list.” List Definition, AMERICAN
`
`HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, SECOND COLLEGE ED.
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`735 (1982).
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`
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`2. Interact With
`
`Claim 1 recites, “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
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`to cause the hand held device to transmit one or more command codes to the
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`at least one of the plurality of home appliances associated with the specified
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`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
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`lists of favorite channels” (emphases added). Patent Owner contends that
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`the “whereby” clause contains several interrelated elements that must be
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`considered together. PO Resp. 2–4. Further, Patent Owner contends that
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`“interact with” means “select a channel from.” Id. at 5–6.
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`A general dictionary defines “interact” as an intransitive verb meaning
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`“[t]o act on each other.” Interact Definition, AMERICAN HERITAGE
`
`DICTIONARY OF THE ENGLISH LANGUAGE, SECOND COLLEGE ED. 669 (1982).
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`The claim recites that the user “may interact with the at least one of the
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`plurality of lists when displayed in the display.” Although the user may
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`“act” on the list,2 the list does not, in turn, “act” on the user. The term
`
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`2 In the interest of brevity, in this Decision we will refer to the minimum
`requirement of “at least one of the plurality of lists” — a list.
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`“interact” in claim 1 is, thus, not used in its ordinary, general dictionary
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`
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`sense. Rather, “interact with” appears to relate to user/device “interaction,”
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`such as an interactive computer terminal that receives input from a user and
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`provides output, which may include information (or “feedback”) to the user
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`in response to the input.
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`Petitioner submits that “interact with” is broader than “select a
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`channel from.” Pet. Reply 2–5. Petitioner contends that “interact with”
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`could be accomplished by, for example, scrolling or viewing information in
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`a display. Id. at 2–3. We agree to the extent that the phrase “interact with” a
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`list when displayed, in isolation, might be so interpreted. We also agree
`
`with Petitioner (id. at 2–5) to the extent that Patent Owner fails to show that
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`the disclosure of the ’930 patent limits “interact with” to selection of a
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`channel from the list. In the language of claim 1, however, that the user may
`
`“interact with” a list when displayed, to cause the device to transmit
`
`command codes for the purpose of tuning to a channel, implies that
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`“interaction” with the list is selection of an item from the list, for effecting
`
`transmission of the codes.
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`Patent Owner submits that when read as a whole, the “whereby”
`
`clause of claim 1 requires, in order “to interact” with a displayed favorite
`
`channel list to cause the remote to tune an appliance to a favorite channel
`
`represented on the displayed favorite channel list, a user must select a
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`channel from the displayed favorite channel list. PO Resp. 10. According to
`
`Patent Owner, “‘[r]epresented on’ in the context of Claim 1 must reflect the
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`concept that the selected channel be depicted on the display of the remote
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`control for the user to select.” Id. at 11.
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`8
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`Petitioner responds that Patent Owner’s construction of “represented
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`
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`on” would read out a “step-through” embodiment in the ’930 patent
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`specification that, presumably, does not require display of a channel. Pet.
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`Reply 6. The present inquiry, however, concerns the subject matter
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`embraced by claim 1, as opposed to what any particular embodiment
`
`described in the patent may or may not require.
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`Further in response to Patent Owner’s construction, without citation to
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`any evidence in the record, Petitioner submits:
`
`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 6–7. A channel, or a representation of a channel, can however be
`
`displayed on a list. The displayed list of channels, represented as
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`programming network icons, as depicted in Figure 17a of the ’930 patent
`
`(reproduced supra), contains representations of particular channels for
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`selecting an icon for tuning to the particular channel associated with that
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`icon. We agree with Petitioner to the extent that claim 1 does not require
`
`that a channel be depicted on the display of the remote control for the user to
`
`select. However, in view of the language of claim 1 that interaction with the
`
`displayed list is “for the purpose of” tuning to a channel “represented on” the
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`list, the claim requires, at the least, that a representation of the channel for
`
`tuning be displayed when the user interacts with the list to cause the hand
`
`held device to transmit command codes for tuning the device to a particular
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`channel. We emphasize that our determination results from the claim
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`language requirements, not because any particular embodiment or any
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`particular written description in the ’930 patent requires such interpretation,
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`and without any improper incorporation of details from its disclosure into
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`the claim.
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`B. Asserted Ground of Unpatentability
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`1. Realistic as Prior Art
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`Patent Owner contests the status of Realistic as prior art and, in
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`particular, its status as a printed publication under 35 U.S.C. § 102(b). PO
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`Resp. 32–35. Although in view of the record at the time of institution we
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`found there was a sufficient threshold showing that Realistic is § 102(b)
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`prior art (Dec. on Inst. 5–6), we do not reach the final determination whether
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`Realistic is proper prior art for this proceeding. For reasons expressed infra,
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`even if we presume that Realistic is a printed publication under § 102(b), the
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`evidence provided by Petitioner fails to establish, by a preponderance, the
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`unpatentability of claim 1.
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`
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`2. Realistic
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`An excerpt from page 36 of Realistic (Ex. 1003, 19) is reproduced
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`below.
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`10
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`The excerpt from page 36 illustrates how favorite channels are
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`specified. When the user presses the “LEARN” key, “SELECT” and “KEY”
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`appear in the display. In the second step, the user presses “FAVORITE,”
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`and the “FAV” (favorite) indicator appears. “CHN**” also appears in the
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`display.
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`A further excerpt from page 36 of Realistic (Ex. 1003, 19) is
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`reproduced below.
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`
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`11
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`The further excerpt illustrates the next steps for selecting favorite
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`channels. In the third step, the two-digit favorite channel is entered. For
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`example, if the user presses the keys “0” and “4,” “CHN 04” appears in the
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`display.
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`An excerpt from pages 38 and 39 of Realistic (Ex. 1003, 20) is
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`reproduced below.
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`
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`The excerpt from pages 38 and 39 illustrates how one uses the
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`favorite-channel feature. When the user presses the “FAVORITE” key, the
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`“FAV” indicator appears. In the second step, when the user presses
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`“CHANNEL” up or down keys, the remote control transmits the channels
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`
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`from the favorite-channel list. One may select between devices (step 3) such
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`that the favorite-channel list becomes active for that selected device.
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`3. Obviousness over Realistic and Evans
`
`Petitioner contends that claim 1 is unpatentable under 35 U.S.C.
`
`§ 103(a) over Realistic and Evans. Petitioner maps the limitations of claim 1
`
`to teachings in Realistic and Evans that are deemed to correspond to the
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`limitations. Pet. 21–28.
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`Although a channel number is not shown in Realistic in the illustrated
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`step 2 of using the favorite-channel feature (reproduced supra), when the
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`remote transmits the command code (channel number) to the device, one
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`would not necessarily draw the inference that the channel number is not
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`displayed when the command code is transmitted. Realistic does not show
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`in its graphic description everything that is displayed. Compare, for
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`example, step 2 of the favorite-channel selection, where the “FAV” indicator
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`is said to appear and is shown in the display with step 1 of using favorite-
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`channel, where the “FAV” indicator is said to appear but is not shown. See
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`also, e.g., Ex. 1003, 12 (Realistic at pages 22–23; characters in display not
`
`shown in illustration for editing a command sequence). In fact, Patent
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`Owner’s expert, Mr. Cook, admitted that when using the favorite-channel
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`feature the selected channel number is displayed. Ex. 1052, 233:16–234:12,
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`237:11–238:4.
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`In any event, Petitioner submits that Evans teaches that the name of
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`the key or function in a remote control device is displayed when the
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`associated code is output to the receiving device. Pet. 27; Ex. 1004, col. 11,
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`l. 57 – col. 12, l. 26. Petitioner submits further that because Realistic and
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`
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`Evans are directed to remote controls from the same company, artisans at the
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`time would have understood that it was obvious to implement the Realistic
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`remote to use instructions executable by a processing device for displaying
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`information to the user as taught by Evans. Pet. 28; Ex. 1008 (Declaration
`
`of James T. Geier) ¶¶ 34, 39. “Realistic teaches that the CHANNEL keys
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`cause the remote to send commands from the favorites list, and Evans
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`teaches to display the name of the key or function of the code to be
`
`outputted.” Ex. 1008 ¶ 39.
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`Patent Owner argues that the combination of Realistic and Evans does
`
`not teach or suggest all the limitations of the “whereby” clause of claim 1.
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`According to Patent Owner, “[c]laim 1 requires that a user interact with a
`
`favorite channel list displayed on the remote to cause the remote to tune an
`
`appliance to a channel depicted on the displayed favorite channel list.” PO
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`Resp. 18. We do not read the requirements of claim 1 so narrowly.
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`However, we have considered each of the parties’ positions with respect to
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`claim construction as developed during the trial and we are persuaded that
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`the claim requires, at the least, that a representation of the channel for tuning
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`be displayed when the user interacts with the list to cause the hand held
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`device to transmit command codes for tuning the device to a particular
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`channel. See § II.A.2, claim construction, supra. Petitioner does not
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`acknowledge that requirement, and, accordingly, does not show where
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`Realistic, Evans, or a combination thereof might teach or suggest such a
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`limitation. Moreover, Realistic and Evans teach, at best, that a channel or a
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`representation of a channel is displayed when the command codes for tuning
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`to the channel are sent by the remote control device, not a representation of a
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`channel being displayed a priori to aid in selection of the channel by the
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`user; i.e., “for the purpose of” tuning to a channel represented on the list of
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`channels. See Pet. 26–27 (disclosure of Realistic and Evans that Petitioner
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`deems to correspond to “whereby” clause of claim 1).
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`The Petition must specify where each element of a challenged claim is
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`found in the prior art patents or printed publications. 37 C.F.R.
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`§ 42.104(b)(2). We are persuaded by Patent Owner that the Petition fails to
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`do so.
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`C. Conclusion — Realistic and Evans
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` Petitioner has failed to prove, by a preponderance of the evidence,
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`that claim 1 is unpatentable over the combination of Realistic and Evans.
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`D. Patent Owner’s Motion to Exclude
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`Patent Owner moves to exclude Exhibit 1053 and Exhibit 1054, each
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`of which was submitted by Petitioner in its Reply in support of showing that
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`Realistic is prior art. Because we conclude that Petitioner has failed to meet
`
`its burden in showing unpatentability, even if we presume that Realistic is
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`prior art, Patent Owner’s motion to exclude is dismissed.
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`E. Petitioner’s Motion to Exclude
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`Petitioner moves to exclude testimony of Patent Owner’s expert, Mr.
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`Cook, under redirect examination that is said to be inconsistent with
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`admissions under cross-examination, such as admissions that “interacting”
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`with a favorite channel list may include scrolling through channels on the
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`list and that in Realistic a channel from the favorite channel list is displayed
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`on the display of the remote when the up or down channel button is pressed
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`a second time. Pet. Mot. to Exclude 2–3. Petitioner’s motion to exclude is
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`dismissed because Petitioner has not shown where Patent Owner relies on
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`the objected to testimony in any paper filed in this proceeding, and we find
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`none. Moreover, we have given full weight to Mr. Cook’s admission with
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`respect to channel display in Realistic (see § II.B.3, supra), and this final
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`written decision presumes that “interacting” with a favorite channel list may
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`include scrolling through channels on the list (see § II.A.2, supra).
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`F. Motions to Seal
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`Patent Owner and Petitioner each filed several papers (e.g., Paper 16)
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`and exhibits (e.g., Exhibit 1050) under seal, along with motions to seal
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`(Papers 18 and 24) and a protective order (Ex. 2045). The motions are
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`unopposed and are granted.
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`There is an expectation that information will be made public where
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`the information is identified in a final written decision, and that confidential
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`information that is subject to a protective order ordinarily would become
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`public 45 days after final judgment in a trial, unless a motion to expunge is
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`granted. 37 C.F.R. § 42.56; Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,761 (Aug. 14, 2012). In rendering this Final Written Decision, it
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`was not necessary to identify, nor discuss in detail, any confidential
`
`information. A party who is dissatisfied with this Final Written Decision
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`may appeal the Decision pursuant to 35 U.S.C. § 141(c), and has 63 days
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`after the date of this Decision to file a notice of appeal. 37 C.F.R. § 90.3(a).
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`In view of the foregoing, the confidential documents filed in the
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`instant proceeding will remain under seal, at least until the time period for
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`filing a notice of appeal has expired or, if an appeal is taken, the appeal
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`process has concluded. The record for the instant proceeding will be
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`preserved in its entirety, and the confidential documents will not be
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`expunged or made public, pending appeal. Notwithstanding 37 C.F.R.
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`§ 42.56 and the Office Patent Trial Practice Guide, neither a motion to
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`expunge confidential documents nor a motion to maintain these documents
`
`under seal is necessary or authorized at this time. See 37 C.F.R. § 42.5(b).
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`III. CONCLUSION
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`For the foregoing reasons, we conclude that Petitioner has not
`
`demonstrated, by a preponderance of the evidence, that claim 1 of the ’930
`
`patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the
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`combination of Realistic and Evans.
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`In consideration of the foregoing, it is
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`IV. ORDER
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`ORDERED that claim 1 of the ’930 patent has not been shown to be
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`unpatentable;
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`FURTHER ORDERED that the parties’ respective motions to seal are
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`granted;
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`FURTHER ORDERED that the parties’ respective motions to exclude
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`evidence are dismissed; and
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`FURTHER ORDERED that, because this is a final written decision,
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`parties to the proceeding seeking judicial review of the decision must
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`comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`17
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`18
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`IPR2014-01109
`Patent 7,831,930 B2
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`For Petitioner:
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`Douglas A. Miro
`dmiro@ostrolenk.com
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`Peter Kang
`pkang@sidley.com
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`Theodore Chandler
`tchandler@sidley.com
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`Ferenc Pazmandi
`fpazmandi@sidley.com
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`Keith Barkaus
`kbarkaus@ostrolenk.com
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`For Patent Owner:
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`Eric Maiers
`maierse@gtlaw.com
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`Michael Nicodema
`nicodemam@gtlaw.com
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`James Lukas
`lukasj@gtlaw.com
`
`Robbie Harmer
`harmer@gtlaw.com