IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Declaration of
`James T. Geier
`
`In Support of the Petition for Inter
`Partes Review of U.S. Patent No.
`RE39,059
`
`
`In re Patent of: Foster
`
`Patent No.: RE39,059
`
`Filed: March 31, 2003
`
`Issued: April 4, 2006
`
`Assignee: Universal Electronics Inc.
`
`Title: COMPUTER
`PROGRAMMABLE REMOTE
`CONTROL
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`DECLARATION OF JAMES T. GEIER
`
`
`
`Background and Qualifications
`1. My name is James T. Geier. I am the founder and principal consultant for
`
`Wireless-Nets. I have 30 years experience in the communications industry
`
`designing, analyzing and implementing communications systems, wireless
`
`networks, and mobile devices.
`
`
`
`Universal Remote Control Exhibit 1006: Page 1
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`

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`2.
`
`I earned my Masters of Science in Electrical Engineering from the Air
`
`Force Institute of Technology in 1990. I received my Bachelor of Science in
`
`Electrical Engineering from California State University in 1985.
`
`3.
`
` I served in the U.S. Air Force from 1977 to 1992 as a Commissioned
`
`Officer where I worked as a Communications System Engineer for six years, as a
`
`Systems Test Engineer for four years and a Systems Design Engineer for three
`
`years. After the Air Force, I worked in private industry for eight years before
`
`founding my current company, Wireless-Nets, Ltd. in April, 2000.
`
`4.
`
`In my role as a Communications Systems Engineer for the U.S. Air Force
`
`from 1977 to 1983, I performed acceptance testing of newly-designed radar
`
`systems and maintained automatic tracking radar systems in support of tactical Air
`
`Force operations worldwide at the 75th TCF. From 1986 to 1989, I performed
`
`analog, digital, and protocol tests on various government wireless computer
`
`networks and developed testing approaches and methods as a Systems Test
`
`Engineer for the AFCC Operational Test and Evaluation Center as a Lieutenant.
`
`From 1990 to 1992 I served as a Captain at the Information Systems Center, where
`
`I evaluated the effectiveness of wireless LAN technology for use in mobile and
`
`portable military environments, represented the Air Force as part of the IEEE
`
`802.11 Wireless LAN standards development and designed and implemented
`
`large-scale LANs and WANs for various government organizations.
`
`
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`Universal Remote Control Exhibit 1006: Page 2
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`

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`5. After the Air Force, I was employed by Adroit Systems, where I
`
`researched and analyzed wireless communications technologies for use in U.S.
`
`Department of Defense airborne platforms. In addition, I was employed by TASC,
`
`Inc., where I analyzed and developed communications systems for various
`
`applications, such as data communications on submarines and within electrical
`
`power plants, and designed and implemented databases for various applications,
`
`including development of graphical user interfaces. In addition, I was employed by
`
`Monarch Marking Systems, where I designed and developed wireless middleware
`
`that coordinated communications among various systems components, such as bar
`
`code scanners, printers and application servers. In addition, while working at
`
`Monarch Marking Systems, I designed and implemented user interfaces on
`
`wireless bar code scanners.
`
`6. As a consultant for Wireless-Nets, Ltd., I have designed and
`
`implemented wireless systems for various applications. For example, I designed
`
`and implemented a wireless system that includes a transmitting device with a
`
`keypad, joystick or other input device that would generate a code indicating
`
`actuation of the input device and transmit the code to a receiver. The receiver
`
`would decode the code and generate and transmit commands to control various
`
`other devices.
`
`7.
`
`I have authored over a dozen books on mobile and wireless topics,
`
`
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`Universal Remote Control Exhibit 1006: Page 3
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`

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`including Designing and Deploying 802.11n Wireless Networks (Cisco Press),
`
`Implementing 802.1X Security Solutions (Wiley), Wireless Networking Handbook
`
`(New Riders) and Network Re-engineering (McGraw- Hill).
`
`8.
`
`I have been an active participant within IEEE standards organizations,
`
`such as the IEEE 802.11 Working Group, and the Wi-Fi Alliance and have served
`
`as Chairman of the IEEE Computer Society, Dayton Section, and various
`
`conferences.
`
`9. A copy of my latest curriculum vitae (C.V.) is attached as Appendix A.
`
`Status as Independent Expert Witness
`10.
`
`I have been retained in this matter by Universal Remote Control, Inc.
`
`("Petitioner" or "URC") to provide an analysis of the scope and content of U.S.
`
`Patent No. RE39,059 (hereinafter the "'059 patent") relative to the state of the art
`
`at the time of the earliest application underlying the '059 Patent. In particular, my
`
`analysis relates only to claims 13-17, 19, 20-26 and 30, which I am informed are
`
`the only claims asserted from the ‘059 patent in the 2013 UEI litigation. I have
`
`also been retained to provide analysis regarding what a person of ordinary skill in
`
`the art related to universal remote control devices would have understood at the
`
`time of the earliest application underlying the '059 patent.
`
`11.
`
`I am being compensated at the rate of $300 per hour for my work. My fee
`
`is not contingent on the outcome of any matter or on any of the technical positions
`
`
`
`Universal Remote Control Exhibit 1006: Page 4
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`I explain in this declaration. I have no financial interest in Petitioner.
`
`12.
`
`I have been informed that Universal Electronics Inc. (hereinafter referred
`
`to as "Patent Owner") owns the '059 Patent against Petitioner URC. I have no
`
`financial interest in the Patent Owner or the '059 patent nor to my recollection have
`
`I ever had any contact with the Patent Owner, or the inventors of the ‘059 patent.
`
`Description of the Relevant Field and the Relevant Timeframe
`13.
`
`I have carefully reviewed the '059 Patent.
`
`14. For convenience, all of the information that I considered in arriving at my
`
`opinions is listed in Appendix B.
`
`15. Based on my review of these materials, I believe that the relevant field
`
`for purposes of the '059 Patent is the remote control and consumer electronics and
`
`home automation systems. I have been informed that the relevant timeframe is
`
`around 1997.
`
`16. As described in above, I have extensive experience in the relevant field,
`
`including experience relating to wireless communications and coordination of
`
`system components. Based on my experience, I have an established understanding
`
`of the relevant field in the relevant timeframe.
`
`The Person of Ordinary Skill in the Relevant Field in the Relevant Timeframe
`17.
`
`I have been informed that "a person of ordinary skill in the relevant field"
`
`
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`Universal Remote Control Exhibit 1006: Page 5
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`is a hypothetical person to whom an expert in the relevant field could assign a
`
`routine task with reasonable confidence that the task would be successfully carried
`
`out. That person of ordinary skill in the art, at the time the priority document of
`
`the '059 patent was filed, would have a bachelors degree in electrical engineering,
`
`telecommunications, or computer science (or an equivalent degree) with two years
`
`experience in the communications industry and was aware of programmable
`
`universal remote controls, including techniques for designing user interfaces.
`
`18. Based on my experience, I am a person of ordinary skill in the relevant
`
`field. I have also supervised, directed, and instructed many such persons over the
`
`course of my career.
`
`Background of the Technology
`19.
`
`In general, remote controls were developed to control electronic home
`
`appliances, such as televisions, stereos, lights, thermostats and related devices.
`
`These devices are designed to receive commands transmitted from the remote
`
`controls in order to perform a function desired by the user of the remote control.
`
`20. Early remote controls were dedicated to particular devices, resulting in a
`
`basket of remotes if the home had many electronic devices. A programmable
`
`universal remote control serves to allow a user to aggregate the command
`
`functions performed by the multiple remote controls into a single device. A
`
`programmable universal remote control, once configured for, or matched to, a
`
`
`
`Universal Remote Control Exhibit 1006: Page 6
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`user's equipment, can control that equipment.
`
`21. By the mid 1990s, universal remote controllers with displays and touch
`
`screens were also available. These remotes had advanced graphical user interfaces
`
`that were often highly customizable allowing the user to define control elements,
`
`such as soft buttons, for each of the controlled devices, and to assign corresponding
`
`commands or macros to those buttons. Thus, programs to design the user interface
`
`of these remotes were also available at this time.
`
`22. As illustrated by the references discussed below, a person of ordinary
`
`skill in the art, in the relevant timeframe, was aware of universal remote controls
`
`encoding and transmitting command codes to selected devices and designing user
`
`interfaces for the device selection and control.
`
`The '059 Patent
`23. The ‘059 patent is directed to a program that can be used to customize a
`
`user interface on a universal remote, in particular those with a touch screen display.
`
`The ‘059 patent discloses creating user selectable screen objects, such as soft
`
`buttons on a general purpose computer, and transferring those screen objects to a
`
`hand-held remote controller. See the ‘059 patent at Abstract.
`
`24. According to the ‘059 patent, the remote control development software
`
`can provide object oriented editing controls to modify the shape and location of
`
`soft keys. Id. at 10:59-11:12. The ‘059 patent admits that “object-oriented editing
`
`
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`Universal Remote Control Exhibit 1006: Page 7
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`controls [are] … known in the art.” Id. at 11:6-12. Indeed, object-oriented editing
`
`tools were available at least by the mid 1990s on Windows computers, and even
`
`earlier on Apple computers.
`
`Claim Interpretation
`25.
`
`In proceedings before the USPTO, I understand that the claims of an
`
`unexpired patent are to be given their broadest reasonable interpretation in view of
`
`the specification from the perspective of one skilled in the art, according to 37
`
`C.F.R. § 42.100(b). Thus, the claim terms of the '059 patent are used in their
`
`ordinary and customary sense as one skilled in the relevant field would understand
`
`them.
`
`Unpatentability Based on Prior Art in the Present Proceedings
`26.
`
`I am informed that the application for the '059 Patent was filed in March
`
`of 2003 as a reissue of U.S. Patent No. 6,211,870 claiming priority to a
`
`provisional application filed on July 7, 1997. It is my understanding that the ‘059
`
`patent is not entitled to any priority earlier than the July 1997 date. It is my
`
`understanding that all of the art discussed below qualifies as prior art.
`
`27.
`
`I have been informed that a patent claim can be found unpatentable as
`
`anticipated when each and every claim limitation is found within a single reference
`
`or is a necessary part of a claim limitation.
`
`28.
`
`I have been informed that a patent claim can be found unpatentable as
`
`
`
`Universal Remote Control Exhibit 1006: Page 8
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`obvious where the differences between the subject matter sought to be patented
`
`and the prior art are such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having ordinary skill in the
`
`relevant field. I understand that an obviousness analysis involves a consideration of
`
`(1) the scope and content of the prior art; (2) the differences between the claimed
`
`inventions and the prior art; (3) the level of ordinary skill in the pertinent art; and
`
`(4) secondary considerations of non-obviousness.
`
`29. My analysis of these considerations is set forth in the following sections.
`
`Claims 13-17, 19-26, and 30 of the ‘059 patent are obvious over Lexicon in
`view of Ciarcia
`30. Lexicon is a programming manual for a Lexicon 500T System Controller
`
`from 1994. Ex. 1003. The Lexicon 500T is an example of highly customizable
`
`universal remote controller with a touchscreen user interface to control audio/video
`
`and home automation systems.
`
`31. The Lexicon 500T has a drawing program that allows designing the user
`
`interface elements like buttons, text, and symbols. Id. at 1. The Lexicon 500T had
`
`a “serial port for communication with a special PC interface program for backup
`
`and restore of previously programmed displays and IR commands.” Id. Thus,
`
`Lexicon teaches skilled artisans the claimed object oriented “creating and editing”
`
`of soft buttons for the remote’s user interface and a related program on a general
`
`
`
`Universal Remote Control Exhibit 1006: Page 9
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`purpose computer for backup and restore that designed user interface.
`
`32.
`
` In Lexicon, the user interface design program is built into the remote.
`
`Id. Skilled artisans at the time understood that such design programs can also run
`
`on the general purpose computer on which the Lexicon user interface is stored for
`
`backup. Indeed, ten years before the ‘059 patent, Ciarcia expressly taught in an
`
`electronics magazine (BYTE) that using a PC for defining user interfaces for a
`
`universal remote made sense since the “PC has a full keyboard and display, disk
`
`storage, and, best of all, high level programming languages. Writing a PC program
`
`is much easier than writing an 8031 program.” Ciarcia (Ex. 1004) at 119.
`
`33.
`
` Thus, skilled artisans at the time understood that Lexicon’s object
`
`oriented programmable user interface can be implemented on a PC and
`
`downloaded later, as taught by Ciarcia, since “it really simplified the logic
`
`[because] [t]he PC has a full keyboard and display, disk storage, and, best of all,
`
`high level programming languages. Writing a PC program is much easier than
`
`writing an 8031 program.” Ciarcia (Ex. 1004) at 119.
`
`34.
`
`In my opinion, the Lexicon and Ciarcia references render obvious claims
`
`13-17, 19-26, and 30 of the ‘059 patent.
`
`35. Lexicon discloses a remote control development program that is used in
`
`connection with a general purpose computer, e.g., to backup the user interfaces that
`
`
`
`Universal Remote Control Exhibit 1006: Page 10
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`were created by the development program. See Lexicon at pp. 1, 7 and 9-16.
`
`36.
`
`It was well known at the time that general purpose computers include a
`
`processor, an operating system, a short term memory, a long term memory, a
`
`graphics display and a user input device.
`
`37. Ciarcia discloses using the PC to set up menus of devices and functions
`
`for each device. Ciarcia at pp. 114 and 119.
`
`38. Lexicon discloses to skilled artisans providing the ability to edit screen
`
`objects, such as soft keys. See Lexicon at p. 10, 11, 12, 14, 15, 32.
`
`39. Lexicon discloses locating, sizing and labeling buttons for display on a
`
`page of a hand held device and uploading and downloading pages to a PC. Ciarcia
`
`discloses setting up menus for a hand held device on a display of a computer and
`
`then downloading them to the remote control. Thus, it would have been obvious at
`
`the time of the invention of the ‘059 patent to utilize the external computer to
`
`locate, size and label pages buttons and then download them for display on the
`
`handheld as taught by Lexicon.
`
`40. Lexicon also discloses object oriented tools for creating and editing soft
`
`keys. See Lexicon at pp.1, 10, 11, 12. Lexicon also discloses tagnames for
`
`commands, id. at pp.14 and 15, and assigning comamnds, id. at pp 20-21.
`
`
`
`Universal Remote Control Exhibit 1006: Page 11
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`

`
`Claims 13-17, 19-26, and 30 of the ‘059 patent are obvious over AMX in view
`of Admitted Prior Art
`41. AMX is an instruction manual for creating user interfaces for touch panel
`
`remote controls. AMX teaches that programs like “TPDOC or TPDesign touch
`
`panel design programs” can be used to create custom pages with “buttons, icons,
`
`sliders, bar graphs, time displays, logos, and drawings.” Ex. 1005 (AMX) at 1.
`
`The TPDOC and TPDesign programs are respectively DOS and Windows based
`
`design programs. Id. at 138.
`
`42.
`
` The AMX touch panels also offer “Panel programming, screens, and
`
`drawings that can be uploaded and downloaded with TPDOC or TPDesign touch
`
`panel software” using RS-232 port communication. Id. at 1-2.
`
`43. Skilled artisans at the time understood that DOS and Windows based
`
`TPDOC and TPDesign user interface design programs can run on general purpose
`
`computers. Furthermore, the applicants admitted that object oriented editing tools
`
`were available on general-purpose computers (‘059 at 11:6-12). Accordingly,
`
`skilled artisans at the time understood that the programs like TPDesign that runs on
`
`Windows can use object oriented tools for the design, as required by the ‘059
`
`patent.
`
`44. AMX also discloses object oriented tools for creating and editing soft
`
`keys, including tagnames. See AMX at pp. 1, 2, 19-114, Figures 18 and 20 at pp.
`
`
`
`Universal Remote Control Exhibit 1006: Page 12
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`19 and 20.
`
`Availability for Cross-Examination
`45.
`
`In signing this declaration, I recognize that the declaration may be filed
`
`as evidence in a contested case before the Patent Trial and Appeal Board of the
`
`United States Patent and Trademark Office. I also recognize that I may be subject
`
`to cross examination in the case and that cross examination will take place within
`
`the United States. If cross examination is required of me, I will cooperate to the
`
`best of my ability to appear for cross examination within the United States during
`
`the time allotted for cross examination.
`
`Right to Supplement
`46.
`
`I reserve the right to supplement my opinions in the future to respond to
`
`any arguments that the Patent Owner raises and to take into account new
`
`information as it becomes available to me.
`
`Jurat
`47.
`
`I declare that all statements made herein of my own knowledge are true
`
`and that all statements made on information and belief are believed to be true; and
`
`further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`48.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`
`
`Universal Remote Control Exhibit 1006: Page 13
`
`

`
`James T. Geier
`
`/g"
`
`Date: July 2, 2014
`
`-1
`
`Universal Remote Control Exhibit 1006: Page 14
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`

`
`APPENDIX A
`
`James T. Geier
`
`
`
`
`
`CONTACT INFORMATION
`
`Name: James T. Geier
`Title: Principal Consultant
`Company: Wireless-Nets, Ltd.
`Address: 685 North Enon Road, Yellow Springs, Ohio 45387 U.S.A.
`Email: jimgeier@wireless-nets.com
`Cell Phone: +1 937-829-0008
`Website: www.wireless-nets.com
`
`
`
`PROFILE
`
`James Geier is an independent consultant and author with 30 years experience in the communications
`industry designing, analyzing and implementing communications systems, wireless networks, and mobile
`devices. James is the author of over a dozen books on mobile and wireless topics, such as including
`Designing and Deploying 802.11n Wireless Networks (Cisco Press), Implementing 802.1X Security
`Solutions (Wiley), Wireless Networking Handbook (New Riders) and Network Re-engineering (McGraw-
`Hill). He has been an active participant within IEEE standards organizations, such as the IEEE 802.11
`Working Group, and the Wi-Fi Alliance. He has served as Chairman of the IEEE Computer Society,
`Dayton Section, and various conferences. He has served as a testifying expert for patent litigation cases
`focusing on technologies dealing with mobile devices, cellular systems, wireless network protocols,
`network security mechanisms, location systems, and application data management protocols.
`
`PROFESSIONAL EXPERIENCE
`
`Principal Consultant and Founder – Wireless-Nets, Ltd. (Apr 2000 - present)
` Designed mobile devices, such as smart phones, and implemented corresponding software /
`firmware for various startup firms.
` Designed and integrated 802.11 and 802.15 wireless radios into mobile devices, such as smart
`phones, hospital patient monitors, cable T.V. boxes, bar code scanners and robots.
` Designed large-scale wireless LAN infrastructures and Wi-Fi hotspots for deployment in hospitals,
`airports, industrial facilities and municipalities.
` Analyzed wireless communications protocols as the basis for troubleshooting mobile system /
`network problems.
`
`
`Product Engineer / Manager - Monarch Marking Systems (Aug 1996 – Mar 2000)
` Designed and implemented RF radios for Monarch’s bar code scanners and printers.
` Designed and implemented wireless middleware software for improving performance between
`mobile wireless devices and application servers.
` Designed and implemented wireless network infrastructures for wireless bar code scanners and
`portable printers used in retail and manufacturing applications.
`
`
`
`Senior Systems Engineer - TASC, Inc. (Mar 1994 to Jul 1996)
` Designed and implemented an enterprise-wide wired and wireless network for Dayton Power and
`Light to support the migration from mainframe to client/server systems.
` Designed an information system architecture that supports internal and external communications
`for the U.S. Navy’s NSSN attack submarine.
` Analyzed requirements for hardware, software, and support of the Joint Logistics Systems Center
`(JLSC) Materiel Management Standard System (MMSS) for the combined U.S. militaries.
`
`
`
`1
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`Universal Remote Control Exhibit 1006: Page 15
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`

`
`
`Senior Systems Engineer - Adroit Systems, Inc. (Aug 1992 to Feb 1994)
` Researched and analyzed emerging wireless network technologies as part of the Department of
`Defense Airborne Reconnaissance Data Link Architecture (ARDA) study, supporting
`communications for airborne systems.
` Designed a software tool that aids network engineers in planning, upgrading and maintaining
`shipboard computer networks - based on a Small Business Innovative Research (SBIR)
`government grant obtained from the U.S. Navy.
`
`
`Systems Design Engineer - Information Systems Center, Captain U.S. Air Force (Sep 1990 – Jun 1992)
` Evaluated the effectiveness of wireless LAN technology for use in mobile and portable military
`environments.
` Represented the Air Force as part of the IEEE 802.11 Wireless LAN standards development.
` Designed and implemented large-scale LANs and WANs for various government organizations.
`
`
`Systems Test Engineer - AFCC Operational Test and Evaluation Center, Lieutenant U.S. Air Force (Sep
`1986 - May 1989)
` Performed analog, digital, and protocol tests on various government wireless computer networks.
` Developed testing approaches and methods.
`
`Communications Systems Engineer - 75th TCF, U.S. Air Force (Dec 1977 - Jun 1983)
` Performed acceptance testing of newly-designed radar systems.
` Maintained automatic tracking radar systems in support of tactical Air Force operations
`worldwide.
`
`
`
`EDUCATION
`
`M.S., Electrical Engineering, Air Force Institute of Technology (1990) – thesis involved designing and
`implementing a wireless mesh network for the U.S. Department of Defense.
`B.S., Electrical Engineering, California State University (1985)
`M.B.A, University of Phoenix (2001)
`
`
`
`MILITARY EXPERIENCE
`
`U.S. Air Force, Dec 1977 – Jun 1992, Commissioned Officer.
`
`
`
`BOOK PUBLICATIONS
`
`
` Designing and Deploying 802.11n Wireless LANs, Cisco Press, 2010.
`Implementing 802.1x Security Solutions, Wiley, 2008.
`
` Deploying Voice over Wireless LANs, Cisco Press, 2007.
` Computer Security, Wiley, 2007.
` Computer Transfer and Backup, Wiley, 2007.
` CCIE Routing and Switching – Official Exam Cortication Guide, 2nd Edition, Cisco Press, 2006.
` Wireless Networks – 5-minute Fixes, Wiley, 2006.
` PCs – 5-minute Fixes, Wiley, 2006.
` Wireless Networks – First Step, Cisco Press, 2005 (translated to Chinese, French, Hungarian,
`Italian, Korean, Polish, Portuguese, and Romanian).
` Certified Wireless Analysis Professional - Official Study Guide, McGraw-Hill, 2004.
`
`
`
`2
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`Universal Remote Control Exhibit 1006: Page 16
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`

`
`
`
` Wireless LANs, 2nd Edition, SAMs, 2001.
` Wireless LANs, Macmillan Technical Publishing, 1999.
` Wireless Networking Handbook, Macmillan (New Riders) Publishing, 1996.
` Network Re-Engineering, McGraw-Hill, 1996.
`
`
`INDUSTRY AFFILIATIONS
`
`Chairman, IEEE Computer Society - Dayton Section:
` Managed the 900-member organization and established a continuing education program
`
`
`Chairman, IEEE International Conference on Wireless LAN Implementation:
` Managed all aspects of the conference from 5/91 to 12/92.
`
`
`Member, Wi-Fi Alliance
` Voting member of the Wireless ISP for Roaming (WISPr) committee.
`
`
`IEEE 802.11 Wireless LAN Working Group
` Represented interests of the Department of Defense for dealing with applications and frequency
`allocations.
`
`
`
`TEACHING EXPERIENCE
`
`U.S. Navel Post Graduate School
` Developed and regularly instructed a course on wireless network design and security to students
`and faculty.
`
`
`Wright State University
` Periodically instructed graduate courses on computer communications.
`
`
`USAF Test and Evaluation School
` Developed and instructed a 240 hour training course on wireless system test and evaluation.
`
`
`Conferences
` Regularly gives presentations at international conferences, including Supercomm (Asia),
`Scantech (Germany), and IBC (England).
`
`
`Infocomm Solutions
` Developed and instructed workshops in India, Singapore and Malaysia on wireless network
`implementation.
`
`
`Technology Training Corporation (TTC)
` Developed and instructed international training courses in Mexico and South America on wireless
`networking and network re-engineering.
`
`
`Educational Services Institute
` Developed and instructed courses on software project management, software testing, system
`integration and network re-engineering as part of the Project Management Institute (PMI) Project
`Management Professional (PMP) certification program.
`
`
`Onsite Training
` Regularly instructs workshops on wireless network design and deployment for product
`developers, system integrators, hospitals, and enterprises worldwide.
`
`3
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`Universal Remote Control Exhibit 1006: Page 17
`
`
`
`
`
`

`
`
`LITIGATION RELATED EXPERIENCE
`
`
`WiLAN v. Blackberry
`Law firm: McDermott Will & Emery
`Consulted on behalf of the defendant (Blackberry) in 2013. Analyzed prior art as part of invalidity analysis
`involving messaging, frequency hopping, and forward error correction.
`
`
`
`MLR v. Lenovo
`Law firm: Akin Gump
`Consulted on behalf of the defendant (Lenovo) in 2013. Analyzed prior art as part of invalidity analysis
`involving multi-modal radio technologies.
`
`
`
`Intellectual Ventures vs. AT&T
`Law firm: Dechert
`Consulted on behalf of the plaintiff (Intellectual Ventures) in 2013. Analyzed case documents regarding
`infringement of products and systems involving message fragmentation, message transmission
`protection, message delivery priority, and security protocols.
`
`
`
`
`Skyhook vs. Google
`Law firm: Tensegrity Law Group
`Consulted on behalf of the plaintiff (Skyhook) in 2012. Analyzed software and case documents regarding
`infringement of products and systems implementing location technologies.
`
`
`SIPCO v. Eaton Corporation
`Law firm: Rader, Fishman & Grauer
`Consulted on behalf of the dependent (Eaton Corporation) in 2012. Analyzed prior art and developed
`applicable patent invalidity claims charts regarding sensor network systems. Case settled prior to trial.
`
`
`Motorola vs. Microsoft
`Law firm: Sidley Austin
`Disclosed as testifying expert on behalf of the defendant (Microsoft) in 2012. Analyzed prior art and case
`documents regarding data addressing and update mechanisms; wrote expert reports based on invalidity
`and indirect non-infringement analysis; deposed on each report; testified at the International Trade
`Commission (ITC) in December 2012. Case settled.
`
`
`
`Motorola vs. Microsoft
`Law firm: Sidley Austin
`Disclosed as testifying expert on behalf of the defendant (Microsoft) in 2011. Analyzed prior art and case
`documents regarding security / encryption protocols; analyzed product firmware, wrote expert reports
`based on invalidity and non-infringement analysis; deposed on each report; testified at the International
`Trade Commission (ITC) in January 2012. Case settled.
`
`
`
`
`
`4
`
`Universal Remote Control Exhibit 1006: Page 18
`
`

`
`
`Motorola vs. Microsoft
`Law firm: Sidley Austin
`Disclosed as testifying expert on behalf of the defendant (Microsoft) in 2011. Analyzed prior art and case
`documents regarding application registry and data update technologies; wrote expert reports based on
`invalidity and non-infringement analysis; deposed on each report. Trial schedule pending.
`
`
`
`Autocell vs. Cisco Systems
`Law Firm: Hanify & King
`Disclosed as testifying expert on behalf of the plaintiff (Autocell) in 2010. Analyzed patents, prior art and
`case documents regarding transmit power control of 802.11 radios and access points; performed lab and
`field testing of alleged infringing products; analyzed product firmware; wrote expert reports based on
`infringement and validity analysis; deposed on each report; Case settled prior to trial.
`
`
`Motorola vs. Research In Motion
`Law firm: Sidley Austin
`Disclosed as testifying expert on behalf of the defendant (Research in Motion) in 2010. Analyzed patents,
`prior art and case documents regarding mobile application data accessibility. Case settled prior to trial.
`
`
`
`
`
`Truckstop.Net vs. Sprint Communications
`Law Firm: Holland & Hart
`Disclosed as testifying expert on behalf of the plaintiff (Truckstop.Net) in 2004. Reviewed case
`documents; performed testing of 802.11 signal coverage and performance at truck stops located
`throughout the U.S.; wrote expert reports based on test results and review of case documents; deposed
`on each report; Case settled prior to trial.
`
`5
`
`Universal Remote Control Exhibit 1006: Page 19
`
`
`
`
`
`

`
`APPENDIX B
`
`Information Considered
`
`
`
`The following is a list of materials that I considered in forming my
`
`opinions discussed in the declaration:
`
`1.
`
`2.
`
`U.S. Patent No. RE39,059 to William J. Foster.
`
`Prosecution history of U.S. Patent Application Serial No.
`
`10/403,454.
`
`3.
`
`Lexicon 500T System Controller, Owner’s Guide and
`
`Programming Manual, © 1994 Lexicon, Inc..
`
`
`
`4.
`
`“Build a Trainable Infrared Master Controller,” by Steve Ciarcia,
`
`BYTE March 1987 at pp. 113-123.
`
`5.
`
`Color Passive-Matrix LCD Touch Panels Instruction Manual,
`
`10/96 © 1996 AMX Corporation.
`
`
`
`1
`
`Universal Remote Control Exhibit 1006: Page 20