IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Applicant:
`
`Foster
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01112
`
`v.
`
`Filing Date: March 31, 2003
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`RE39,059
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`COMPUTER
`PROGRAMMABLE
`REMOTE CONTROL
`
`Attorney Doc.: 059489.143500
`
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`8th day of October 2014.
`
`
`
`
`
`
`
`By:
`
`/s/ Cynthia Tapia
`Cynthia Tapia
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND OF THE ’059 PATENT ..................................................... 3
`
`III. CLAIM CONSTRUCTION ............................................................................ 5
`
`IV. THE PETITION DOES NOT MEET THE STATUTORY .......................... 11
`
`A.
`
`B.
`
`The Petition Does Not Establish that Lexicon and AMX Are
`Prior Art to the ’059 Patent Under 35 U.S.C. § 102(b)....................... 12
`There Is No Reasonable Likelihood that Claims 13 – 17, 19 –
` 26, or 30 are Obvious in View of Lexicon and Ciarcia
`(Ground 1) ........................................................................................... 15
`
`1.
`
`2.
`
`3.
`
`The Petition’s Obviousness Analysis under Ground 1
`Does Not Apply the Requisite Graham Factors at least
`Because the Petition Does Not Identify Any Differences
`Between the Claim Limitations and the Alleged Prior Art....... 15
`The Petition Fails to Identify Why One Having Ordinary
`Skill in the Art Would Be Motivated to Combine Lexicon
`and Ciarcia ................................................................................ 18
`Lexicon and Ciarcia Do Not Teach or Suggest Various
`Limitations of Claims 13 – 17, 19 – 26, and 30 ....................... 23
`
`a.
`
`b.
`
`d.
`
`The Petition Does Not Establish That Lexicon and
`Ciarcia Teach or Suggest a Soft Key Object that
`Comprises a Tagname for a Command that Is to
`Be Issued When the Soft Key Is Activated .................... 24
`The Petition Fails to Establish that Lexicon and
`Ciarcia Teach or Suggest Limitations (a) Through
`(e) of Claims 13 and 23, Amongst Others,
`Performed by a General Purpose Computer ................... 27
`The Petition Does Not Establish that Lexicon and
`Ciarcia Teach or Suggest a General Purpose
`Computer that Facilitates Editing of the Screen
`Object, as Recited in Claim 22 ....................................... 30
`
`C.
`
`There Is No Reasonable Likelihood that Claims 13 – 17, 19 –
` 26, or 30 Are Obvious in View of AMX and the Admitted
`Prior Art (Ground 2) ............................................................................ 31
`
`i
`
`

`

`
`
`1.
`
`2.
`
`3.
`
`AMX and the Admitted Prior Art Do Not Teach a
`Remote Control Development Program that Allows a
`User to Display and/or Edit a Screen Object Having a
`Soft Key Object Where the Soft Key Object Includes a
`Tagname for a Command to Be Issued When the Soft
`Key Is Activated........................................................................ 31
`The Petition Also Does Not Identify Where AMX
`Allegedly Discloses the Ability to Edit a Soft Key Object
`that Comprises a Location for Displaying the
`Representation of the Soft Key ................................................. 36
`AMX and the Admitted Prior Art Do Not Teach a
`Remote Control Development Program that Causes a
`General Purpose Computer to Provide Users with an
`Ability to Edit Screen Objects and Perform
`Limitations (a) through (e) as Recited in Claims 13 and
`23, or to Perform the Limitations Recited in the
`Dependent Claims ..................................................................... 38
`
`V.
`
`CONCLUSION .............................................................................................. 41
`
`
`
`
`
`ii
`
`

`

`
`
`
`
`TABLE OF AUTHORITIES
`
`Federal Cases
`Applied Med. Res. Corp. v. U.S. Surgical Corp.,
`448 F.3d 1324 (Fed. Cir. 2006) .......................................................................... 10
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) .................................................................... 13, 14
`CAE Screenplates Inc. v. Heinrich Fiedler GmbH,
`224 F.3d 1308 (Fed. Cir. 2000) .......................................................................... 10
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................... 15, 16, 18
`In re ICON Health & Fitness,
`496 F.3d 1374 (Fed. Cir. 2007) .......................................................................... 22
`In ResQNet.com, Inc. v. Lansa, Inc.,
`594 F.3d 860 (Fed. Cir. 2010) ............................................................................ 14
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) .................................................................... 13, 14
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 15
`Kyocera Wireless Corp. v. Int'l Trade Comm'n,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................... 13
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ............................................................................ 13
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) .......................................................................... 21
`In re Peterson,
`315 F.3d 1325 (Fed. Cir. 2003) .......................................................................... 22
`Ricoh Co., Ltd. v. Quanta Computer Inc.,
`550 F.3d 1325 (Fed. Cir. 2008) .......................................................................... 22
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................ 12
`
`iii
`
`

`

`
`
`Teva Pharms. USA, Inc. v. Eli Lilly & Co.,
`552 U.S. 941 (2007) ............................................................................................ 22
`Therasense, Inc. v. Becton, Dickinson & Co.,
`560 F. Supp. 2d 835 (N.D. Cal. 2008) ................................................................ 13
`
`P.T.A.B. Decisions
`3D-Matrix, Ltd. v. Menicon Co.,
`IPR2014-00398, Paper No. 11 (P.T.A.B. Aug. 1, 2014) .................................... 12
`eBay, Inc. v. Paid, Inc.,
`CBM2014-00125, Paper 15 (P.T.A.B. Sept. 30, 2014) ...................................... 16
`Eizo Corp. v. Barco N.V.,
`IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014) .................................... 15, 16
`Fidelity Nat’l Info. Servs., Inc. v. DataTreasury Corp.,
`IPR2014-00489, Paper No. 9 (P.T.A.B. Aug. 13, 2014) .............................. 33, 37
`Moses Lake Indus., Inc. v. Enthone, Inc.,
`IPR2014-00243, Paper 6 (P.T.A.B. June 18, 2014) ........................................... 16
`Moses Lake Indus., Inc. v. Enthone, Inc.,
`IPR2014-00246, Paper 6 (P.T.A.B. June 18, 2014) ........................................... 16
`Synopsis v. Mentor Graphics Corp.,
`IPR2012-00042, Paper No. 16 (P.T.A.B. Feb. 22, 2013) ................................... 12
`Travelocity.com L.P. v. Cronos Techs., LLC,
`CBM2014-00082, Paper 10 (P.T.A.B. Sept. 15, 2014) ................................ 33, 37
`
`Federal Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 15
`35 U.S.C. § 102(a) ................................................................................................... 12
`35 U.S.C. § 102(a) – (b) ........................................................................................... 14
`35 U.S.C. § 102(b) ................................................................................................... 12
`35 U.S.C. § 103(a) ..................................................................................................... 1
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314(a) ................................................................................................... 11
`
`iv
`
`

`

`
`
`Regulations
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 5
`37 CPR. § 42.100(b) ................................................................................................ 5
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 2
`37 CPR. § 42.104(b)(4) ............................................................................................ 2
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 CPR. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`37 CPR. § 42.107(b) ................................................................................................ 1
`
`
`
`
`
`
`
`v
`
`

`

`
`
`2001.
`
`
`2002.
`
`
`2003.
`
`
`2004.
`
`
`2005.
`
`
`2006.
`
`
`2007.
`
`
`2008.
`
`
`
`
`
`TABLE OF EXHIBITS
`
`3D-Matrix, Ltd. v. Menicon Co., IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014)
`
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)
`
`Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B. July
`23, 2014)
`
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014)
`
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00246, Paper 6
`(P.T.A.B. June 18, 2014)
`
`eBay, Inc. v. Paid, Inc., CBM2014-00125, Paper 15 (P.T.A.B. Sept.
`30, 2014)
`
`Travelocity.com L.P. v. Cronos Techs., LLC, CBM2014-00082, Paper
`10 (P.T.A.B. Sept. 15, 2014)
`
`Fidelity Nat’l Info. Servs., Inc. v. DataTreasury Corp., IPR2014-
`00489, Paper 9 (P.T.A.B. Aug. 13, 2014)
`
`
`
`vi
`
`

`

`IPR2014-01112
`
`
`
`U.S. Patent No. RE39,059
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`Universal Electronics Inc. (“UEI” or “Patent Owner”) respectfully submits
`
`this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R.
`
`§ 42.107 in response to the Petition for Inter Partes Review of Claims 13 – 17, 19
`
`– 26, and 30 of U.S. Patent No. RE39,059 (Ex. 1001, the ‘059patent) filed by
`
`Universal Remote Control, Inc. (“URC” or “Petitioner”). Patent Owner timely
`
`filed this Preliminary Response under 37 C.F.R. § 42.107(b) within three months
`
`of the mailing date of the Notice of Filing Date Accorded to Petition and Time for
`
`Filing Patent Owner Preliminary Response (Paper 3), i.e., July 8, 2014.
`
`I.
`
`INTRODUCTION
`
`Petitioner alleges that the ‘059 Patent is rendered obvious by three prior art
`
`references. The first reference is “Lexicon 500T System Controller, Owner’s
`
`Guide and Programming Manual” (“Lexicon”). (Id. at 4.) The second reference is
`
`an article written by Steve Ciarcia entitled, “Build a Trainable Infrared Master
`
`Controller” (“Ciarcia”). (Id.) The third reference is an instruction manual by
`
`AMX Corporation entitled, “Color Passive Matrix LCD Touch Panels Instruction
`
`Manual” (“AMX”). (Id. at 4 – 5.)
`
`Petitioner identifies two grounds on which it bases its request for inter
`
`partes review. “Ground 1” alleges that Claims 13 – 17, 19 – 26, and 30 are
`
`unpatentable as obvious over Lexicon in view of Ciarcia under 35 U.S.C. § 103(a).
`
`1
`
`

`

`IPR2014-01112
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`
`
`U.S. Patent No. RE39,059
`
`(Pet. at 5.) “Ground 2” alleges that Claims 13 – 17, 19 – 26, and 30 are
`
`unpatentable as obvious over AMX in view of prior art identified by the ’059
`
`Patent (“Admitted Prior Art”). (Id.) In particular, the Petition states that the ’059
`
`Patent “admits” that “object-oriented editing controls [are] . . . known in the art”
`
`and available on general purpose computers. (Pet. at 7, 11, & 35 (citing ’059
`
`Patent col.11 ll.6 – 12).) As a threshold matter, Petitioner has not proven that
`
`Lexicon and AMX are “printed publications” and that they are prior art to the ’059
`
`Patent.
`
`The Board should decline to institute an inter partes review proceeding
`
`because both grounds identified in the Petition suffer from numerous fatal defects.
`
`With respect to Ground 1, the Petition fails to identify sufficient reasons why one
`
`having ordinary skill in the art would have been motivated to combine Lexicon and
`
`Ciarcia. As a further example, each combination upon which Petitioner relies does
`
`not teach or suggest at least one limitation of Claims 13 – 17, 19 – 26, and 30 of
`
`the ’059 Patent. At the very least, the Board should not institute a trial because the
`
`Petition does not comply with 37 C.F.R. § 42.104(b)(4) because it fails to identify
`
`where each element recited in Claims 13 – 17, 19 – 26, and 30 of the ’059 Patent is
`
`found in the cited references—in some cases providing vague citations to nearly
`
`100 pages of a reference. Furthermore, should the Board decide to institute a trial,
`
`the Patent Owner reserves the right to present additional arguments.
`
`2
`
`

`

`IPR2014-01112
`
`
`
`U.S. Patent No. RE39,059
`
`II. BACKGROUND OF THE ’059 PATENT
`
`The ’059 Patent relates generally to remote control devices for electronics
`
`such as TVs, stereos, DVD players, and cable boxes. Some of the claims at issue
`
`relate generally to remote control development programs for use in connection
`
`with general purpose computers. Other claims at issue relate generally to methods
`
`for using general purpose computers to edit screen objects that can be downloaded
`
`to programmable remote controls.
`
`Moreover, the ’059 Patent discloses how to provide a user of a general
`
`purpose computer with the ability to create, edit, delete, and download one or more
`
`“screen objects” for display on a remote control unit. The screen object may
`
`include “key objects” such as the representations shown on Figure 2B of the ’059
`
`Patent, reproduced below:
`
`3
`
`

`

`IPR2014-01112
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`
`
`U.S. Patent No. RE39,059
`
`
`
`(‘059 Patent, Fig. 2B (red annotations added).) Users of the disclosed remote
`
`control development programs and methods may define various features of the
`
`screen object and its key objects before users’ edits are downloaded to the remote
`
`control unit. For example, users may define the appearance of a key object, a
`
`location for the key object, and a tagname for a command that is to be issued when
`
`the key object is activated. The general purpose computer may also permit the user
`
`to, among other things, view a representation of a screen object, view information
`
`regarding the screen object and any key objects associated with the screen object,
`
`and assign commands to key objects.
`
`4
`
`

`

`IPR2014-01112
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`
`
`U.S. Patent No. RE39,059
`
`With continued reference to the annotated figure above, the screen object
`
`may include soft key objects. When a user presses a soft key object on the display,
`
`the remote control unit will issue a command associated with the soft key object.
`
`In short, the remote control development programs and methods permit the user to
`
`define various functionality of the remote control unit by way of a general purpose
`
`computer.
`
`III. CLAIM CONSTRUCTION
`
`Claims are construed using the “broadest reasonable construction in light of
`
`the specification.” 37 C.F.R. § 42.100(b). Petitioner did not identify any terms for
`
`the Board to construe from Claims 13 – 17, 19 – 26, and 30 of the ’059 Patent.
`
`However, the Board should construe the claim term “tagname[s]” as used in the
`
`phrases “tagname for a command which is to be issued when the soft key is
`
`activated” of Claims 13 and 23, “tagnames for commands which may be assigned
`
`to soft key objects” of Claims 13 and 23, “tagname for a command which is to be
`
`issued when the identified programmable key is activated” of Claims 14 and 24,
`
`“tagnames for commands which may be assigned to programmable key objects” of
`
`Claims 14 and 24, and “tagnames for commands that are assigned to the soft key
`
`objects” of Claim 22.
`
`The Board should construe the claim term “tagname” to mean a “descriptor
`
`for a command.” The Board should construe this term because the Petition
`
`5
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`

`

`IPR2014-01112
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`
`
`U.S. Patent No. RE39,059
`
`conflates and confuses “tagnames” with text labels for representations of soft keys.
`
`The ‘059 Patent supports Patent Owner’s proposed definition, which clarifies that a
`
`“tagname” is not a text label for a representation of a soft key. For instance, the
`
`specification states that a soft key object can comprise both a text label and a
`
`tagname for a command and that each serves a different purpose:
`
`A “soft key object” comprises a graphic or pointer to a
`graphic representing soft key which will be displayed on
`the display 221, a text label for the graphic, a location
`on the display 221 for the graphic, and a tagname for
`command which the programmable remote control unit
`200 will issue when the soft key is pressed by the user.
`
`(‘059 Patent col.7 ll.38 – 44 (emphasis added).) The ’059 Patent further
`
`distinguishes between a text label and a tagname through Figure 7, reproduced
`
`below:
`
`6
`
`

`

`IPR2014-01112
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`U.S. Patent No. RE39,059
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`
`
`(‘059 Patent, Fig. 7 (red annotations added).) The ’059 Patent explains that the left
`
`pane 710 in Figure 7 shows “a list 712 of tagnames of the commands in the screen
`
`object,” amongst other information about screen objects. (‘059 Patent col.10 ll.15
`
`– 17.) “The right pane 720 shows a representation 726 of the programmable
`
`remote control unit . . . ,” where one can see text labels on various soft keys 722.
`
`(‘059 Patent col.10 ll.1 – 2.) The ’059 Patent also notes that the tagnames 712
`
`correlate the commands with the soft keys 722. (‘059 Patent col.10 ll.17 – 19.) As
`
`shown, a soft key may be labeled with the text “mute,” whereas a tagname of “TV-
`
`1_Mute” may be associated with a command that is to be issued when that soft key
`
`7
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`

`

`IPR2014-01112
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`
`
`U.S. Patent No. RE39,059
`
`is selected. While in the above-illustrated example the textual label may bear some
`
`similarity to the command tagname, that does not mean that the two items are the
`
`same.
`
`The distinction between a tagname and a textual label becomes more
`
`apparent in embodiments in which a soft key object is assigned multiple
`
`commands. The specification of the ’059 Patent states, “The user may quickly and
`
`easily build a full range of capabilities into the remote control unit, including the
`
`issuance of multiple commands with a single key press.” (‘059 Patent col.3 ll.23 –
`
`26.) Such multi-command buttons are often referred to as “macro buttons” in the
`
`remote control art. Figure 11 of the ’059 Patent, reproduced below, illustrates
`
`examples of such macro buttons.
`
`8
`
`

`

`IPR2014-01112
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`
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`U.S. Patent No. RE39,059
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`
`
`(‘059 Patent, Fig. 11.)
`
`The “Dad” screen object depicted in Figure 11 includes two soft key objects
`
`1161 and 1162. Soft key object 1161 is labeled “ESPN” and soft key object 1162
`
`is labeled “KTWV.” As the ’059 Patent explains with reference to Figure 11:
`
`The soft key object 1161 has been programmed with a
`series of commands for turning on the TV and cable box,
`then tuning the TV to receive from the cable box, then
`tuning the cable box to Dad's favorite cable channel,
`ESPN. The soft key object 1162 has been programmed
`with a series of commands for turning on the stereo
`receiver, then tuning the stereo receiver to Dad's favorite
`radio station, KTWV.
`
`
`(‘059 Patent col. 11 ll.43 – 51.) Thus, while the singular text labels “ESPN” and
`
`“KTWY” provide the remote control user with convenient indicators as to the
`
`9
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`

`

`IPR2014-01112
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`
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`U.S. Patent No. RE39,059
`
`purpose of the associated soft keys, each of those soft keys in fact has multiple
`
`commands associated therewith, wherein each command is designated by a
`
`tagname. In other words, while text labels are visual indicators for the user’s
`
`convenience, tagnames are functional in that they link a soft key object to
`
`corresponding commands.
`
`The claims themselves also confirm that tagnames are distinct from textual
`
`labels. For example, unchallenged Claims 1 and 9 recite embodiments in which a
`
`“soft key object” comprises both a “text label for the representation [of the soft
`
`key]” and a “tagname for a command which is to be issued when the soft key is
`
`pressed.” (‘059 Patent col.12 ll.51-55 & col.13 l.65 – col.14 l.2.) Similarly,
`
`challenged Claim 22 recites an embodiment in which a “soft key object” comprises
`
`a “tagname for a command which is to be issued when the soft key is activated,”
`
`and unchallenged Claim 29, which depends from Claim 22 vis-à-vis its
`
`dependency on Claim 28, recites a label associated with a soft key object that is to
`
`be displayed. Because the claims use different terminology to refer to text labels
`
`and tagnames, the Board should accord those terms different meanings. E.g.,
`
`Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir.
`
`2006); CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317
`
`(Fed. Cir. 2000).
`
`10
`
`

`

`IPR2014-01112
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`
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`U.S. Patent No. RE39,059
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`Accordingly, the Board should construe “tagname[s]” to mean a “descriptor
`
`for a command.”
`
`IV. THE PETITION DOES NOT MEET THE STATUTORY
`REQUIREMENT OF 35 U.S.C. § 314(a)
`
`“The Director may not authorize an inter partes review to be instituted
`
`unless the Director determines that the information presented in the petition filed
`
`under section 311 and any response filed under section 313 shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a). For at least the reasons
`
`set forth below, no reasonable likelihood exists that the Petitioner will prove that
`
`any one of Claims 13 – 17, 19 – 26, and 30 of the ’059 Patent is unpatentable.
`
`As a preliminary matter, Patent Owner notes that the Petition alleges at the
`
`outset and then again in conclusion that the asserted prior art references disclose
`
`the limitations of Claims 13 – 17, 19 – 26, and 30 of the ’059 Patent expressly “or
`
`inherently.” (Pet. at 9 & 54.) Yet the Petition and the supporting Geier
`
`Declaration do not identify any specific claim limitations that are allegedly
`
`disclosed inherently by any reference. (See generally Pet.; see also Ex. 1006,
`
`Geier Decl.)
`
`“To establish inherency, the extrinsic evidence must make clear that the
`
`missing descriptive matter is necessarily present in the thing described in the
`
`reference.” 3D-Matrix, Ltd. v. Menicon Co., IPR2014-00398, Paper No. 11 at 6
`
`11
`
`

`

`IPR2014-01112
`
`
`
`U.S. Patent No. RE39,059
`
`(P.T.A.B. Aug. 1, 2014) (Ex. 2001) (quoting In re Robertson, 169 F.3d 743, 745
`
`(Fed. Cir. 1999)) (internal quotations omitted). A showing of inherency requires
`
`more than mere “probabilities or possibilities.” 3D-Matrix, IPR2014-00398, Paper
`
`No. 11 at 6. The 3-D Matrix Board found that the petitioner’s inherency analysis
`
`was conclusory and lacked persuasive detail because it did “not explain or support,
`
`with specific citations” why the limitation at issue was inherently disclosed. Id. at
`
`11.
`
`At least the petitioner in 3-D Matrix identified the specific limitations that
`
`were allegedly inherently disclosed and provided conclusory explanations. Id. at
`
`10 – 11. Here, Petitioner does even less. Petitioner does not identify a single
`
`limitation that it purports to be inherently disclosed, much less provide an
`
`explanation that would satisfy the standard for inherency recognized by the Board
`
`and the Federal Circuit. (See generally Pet.) As a result, the Petition does not
`
`establish that any of the asserted references inherently discloses limitations from
`
`Claims 13 – 17, 19 – 26, and 30.
`
`A. The Petition Does Not Establish that Lexicon and AMX Are Prior
`Art to the ’059 Patent Under 35 U.S.C. § 102(b).
`As a threshold matter, it is Petitioner’s burden to establish that each
`
`reference qualifies as a “printed publication” under 35 U.S.C. § 102(a) and (b).
`
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16 at 36 (P.T.A.B.
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`Feb. 22, 2013) (Ex. 2002); Therasense, Inc. v. Becton, Dickinson & Co., 560 F.
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`12
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`IPR2014-01112
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`
`
`U.S. Patent No. RE39,059
`
`Supp. 2d 835, 864 (N.D. Cal. 2008) (citing Mahurkar v. C.R. Bard, Inc., 79 F.3d
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`1572 (Fed. Cir. 1996) (confirming it is well settled that a party challenging the
`
`validity of a patent claim, based on a document allegedly published before the
`
`patent’s earliest effective filing date, bears the burden of persuasion by clear and
`
`convincing evidence on all issues relating to the status of the document as prior art,
`
`including public accessibility)). “The statutory phrase ‘printed publication’ has
`
`been interpreted to mean that before the critical date the reference must have been
`
`sufficiently accessible to the public interested in the art; dissemination and public
`
`accessibility are the keys to the legal determination whether a prior art reference
`
`was ‘published.’” See In re Klopfenstein, 380 F.3d 1345, 1347 (Fed. Cir. 2004);
`
`see also Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1350 (Fed.
`
`Cir. 2008). A reference is “publicly accessible” upon a satisfactory showing that:
`
`(1) the “document has been disseminated”; or (2) “otherwise made available to the
`
`extent that persons interested and ordinarily skilled in the subject matter or art
`
`exercising reasonable diligence, can locate it and recognize and comprehend
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`therefrom the essentials of the claimed invention without need of further research
`
`or experimentation.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378
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`(Fed. Cir. 2006).
`
`The Petition has not established that Lexicon and AMX (1) are “printed
`
`publications” and (2) are prior art to the ’059 Patent. The Petition notes that
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`13
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`IPR2014-01112
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`
`
`U.S. Patent No. RE39,059
`
`Lexicon includes the copyright notice, “© 1994 Lexicon, Inc.,” and then simply
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`concludes that “Lexicon is prior art to the ‘059 Patent at least under 35 U.S.C.
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`§ 102(b).” (Pet. at 4.) The Petition similarly notes that AMX includes the
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`copyright notice, “10/96 © 1996 AMX Corporation,” and then simply concludes
`
`that “AMX is prior art to the ‘059 Patent at least under 35 U.S.C. § 102(b).” (Id. at
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`4 – 5.) Petitioner does not offer any additional evidence to support these alleged
`
`dates of publication. (See generally Pet.) Presumably, Petitioner concludes that
`
`the copyright notice date is also the publication date of those references. However,
`
`a copyright notice, on its own, does not establish that Lexicon and AMX are
`
`“printed publications” and, more specifically, that they were disseminated or made
`
`available to the relevant public. See 35 U.S.C. § 102(a) – (b) (2010); see e.g., In
`
`ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 866 (Fed. Cir. 2010) (stating that
`
`public accessibility was the “touchstone” in a determination of whether a reference
`
`was a “printed publication” within the meaning of § 102(b)); Bruckelmyer, 445
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`F.3d at 1378; In re Klopfenstein, 380 F.3d at 1347.
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`In this case, both Lexicon and AMX are product user guides/manuals.
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`Petitioner has not provided any testimony or other corroborating evidence to
`
`establish how each of those references was disseminated, to whom and when. For
`
`example, Petitioner has not presented any evidence that the products associated
`
`with those manuals were ever actually sold, much less when they were sold.
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`14
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`IPR2014-01112
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`U.S. Patent No. RE39,059
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`Indeed, it is equally likely that those manuals were printed and then sat on a
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`warehouse shelf for months or even years. The current evidentiary record simply
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`does not establish if and when Lexicon and AMX became “printed publications”
`
`within the meaning of 35 U.S.C. § 102. Accordingly, the Board should not
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`institute a trial on any ground because each of the alleged grounds includes at least
`
`one of those references.
`
`B.
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`There Is No Reasonable Likelihood that Claims 13 – 17, 19 – 26,
`or 30 are Obvious in View of Lexicon and Ciarcia (Ground 1).
`
`1.
`
`The Petition’s Obviousness Analysis under Ground 1 Does Not
`Apply the Requisite Graham Factors at least Because the
`Petition Does Not Identify Any Differences Between the Claim
`Limitations and the Alleged Prior Art
`
`The Petition is deficient because its obviousness analysis does not comply
`
`with the Graham v. John Deere Co. framework. 383 U.S. 1 (1966). Obviousness
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`is resolved on a number of factual determinations “including (1) the scope and
`
`content of the prior art, (2) any differences between the claimed subject matter and
`
`the prior art, and (3) the level of ordinary skill in the art.” E.g., Eizo Corp. v.
`
`Barco N.V., IPR2014-00358, Paper 11 at 29 (P.T.A.B. July 23, 2014) (Ex. 2003)
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`(citing Graham, 383 U.S. at 17 – 18; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`406 (2007)).
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`Petitions for inter partes reviews “must address the Graham factors.” Eizo
`
`Corp., IPR2014-00358, Paper 11 at 29 – 30. For example, the Board faulted the
`
`15
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`IPR2014-01112
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`
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`U.S. Patent No. RE39,059
`
`petitioner in Eizo Corp. for failing to identify the differences between the claimed
`
`subject matter and the prior art. Id. at 29 – 30. In particular, the Board found
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`insufficient the petitioner’s “conclusory assertion” that “[t]o the extent [the first
`
`prior art reference] may not explicitly teach” the limitation, the second prior art
`
`reference “explicitly teaches this limitation.” Id. at 30. The Board explained that
`
`“such an assertion fails to resolve the exact differences sought to be derived from”
`
`the second prior art reference. Id. (finding that petitioner had not shown a
`
`reasonable likelihood of prevailing on that ground). Numerous other Board
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`decisions have reached the same result. See, e.g., Moses Lake Indus., Inc. v.
`
`Enthone, Inc., IPR2014-00243, Paper 6 at 18 (P.T.A.B. June 18, 2014) (Ex. 2004)
`
`(faulting petitioner for failing to “explain[] any differences between the claimed
`
`subject matter and the prior art”); Moses Lake Indus., Inc. v. Enthone, Inc.,
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`IPR2014-00246, Paper 6 at 17 (P.T.A.B. June 18, 2014) (Ex. 2005) (same); eBay,
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`Inc. v. Paid, Inc., CBM2014-00125, Paper 15 at 21 (P.T.A.B. Sept. 30, 2014) (Ex.
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`2006) (concluding similarly even where petitioner’s claim charts were “detailed”).
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`Here, the Petition does not address the Graham factors because it does not
`
`identify “any differences between the claimed subject matter and the prior art.”
`
`The Petition’s analysis under Ground 1 based on the combination of Lexicon and
`
`Ciarcia relies on Ciarcia for two limitations of Claim 13: the preamble and the
`
`limitation beginning with “a set of instructions . . . .” (Pet. at 16 – 20.) With
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`16
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`IPR2014-01112
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`
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`U.S. Patent No. RE39,059
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`respect to the preamble directed to a “remote control development program,” the
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`Petition’s analysis starts:, “Lexicon and Ciarcia disclose to skilled artisans the
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`claimed a remote control development program.” (Id. at 17 (citing Geier Decl.
`
`¶ 35).) The Petition continues by citing alleged support from both Lexicon and
`
`Ciarcia. (Pet. at 17.) Critically, though, the Petition does not explain any
`
`differences between Lexicon and the preamble or any differences between Ciarcia
`
`and the preamble. (See id.) In other words, Petitioner is unwilling to concede
`
`anything with respect to Lexicon and Ciarcia in the context of the preamble of
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`Claim 13. This hardline approach renders the Petition even more deficient than the
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`petitions referenced in the cases above.
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`Regarding the second limitation of Claim 13, beginning with “a set of
`
`instructions,” the Petition’s analysis again does not identify any differences
`
`between the alleged prior art and the claim limitations. (See Pet. at 18 – 20.) The
`
`Petition’s analysis starts: “Lexicon and Ciarcia disclose to skill