IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Request For Rehearing Pursuant To
`37 C.F.R. §42.71(d)(1)
`
`In re Patent of: Paul D. Arling and
`
`Patrick H. Hayes
`
`Case No.: IPR2014-1146
`
`Patent No.: 8,243,207
`
`Filed: September 29, 2009
`
`Issued: August 14, 2012
`
`Assignee: Universal Electronics Inc.
`
`Title: SYSTEM AND METHOD FOR
`ACTIVITY BASED
`CONFIGURATION OF AN
`ENTERTAINMENT SYSTEM
`
`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
`23rd day of January, 2015
`
`By: __/Jeannie Ngai/
`Jeannie Ngai
`
`{01704541.2}
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Request For Rehearing Pursuant To
`37 C.F.R. §42.71(d)(1)
`
`In re Patent of: Paul D. Arling and
`
`Patrick H. Hayes
`
`Case No.: IPR2014-1146
`
`Patent No.: 8,243,207
`
`Filed: September 29, 2009
`
`Issued: August 14, 2012
`
`Assignee: Universal Electronics Inc.
`
`Title: SYSTEM AND METHOD FOR
`ACTIVITY BASED
`CONFIGURATION OF AN
`ENTERTAINMENT SYSTEM
`
`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
`23rd day of January, 2015
`
`By: __/Jeannie Ngai/
`Jeannie Ngai
`
`{01704541.2}
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................1
`
`ARGUMENT.....................................................................................1
`
`A. The Decision appears to overlook portions of the claim language
`of the claim element allegedly not inherently disclosed by the
`Dubil reference..................................................................................1
`
`B. The Board’s Decision appears to overlook or Petitioner’s
`application of the Graham factors in its argument that the
`limitation of claim 12 believed to be inherent to Dubil would
`have at least been obvious in light of the teachings of Dubil … 3
`
`III.
`
`CONCLUSION……………………………………………………6
`
`{01704541.2}
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`- ii -
`
`
`
`TABLE OF AUTHORITIES
`
`Regulations
`
`37 C.F.R. §42.71(d)(1) ..............................................................................................1
`
`{01704541.2}
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`- iii -
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`
`
`EXHIBIT LIST
`
`1001. U.S. Patent No. 8,243,207 (filed September 29, 2009) (issued August 14,
`
`2012) to Paul D. Arling and Patrick H. Hayes.
`
`1002. Prosecution history of U.S. Patent Application Serial No. 12/569,161, which
`
`matured into the '207 patent.
`
`1003. Declaration of Jim Geier, In Support of the Petition for Inter Partes Review
`
`of U.S. patent No. 8,243,207.
`
`1004. First Amended Complaint for patent Infringement in Universal Electronics
`
`Inc. v. Universal Remote Control, Inc., Civil Action No. SACV 13-00984,
`
`dated July 22, 2013.
`
`1005. U.S. Patent Publication No. 2003/0120831 (filed December 20, 2001)
`
`(published June 26, 2003) to Thomas Dubil et al.
`
`1006. "IntelliControl Reference Manual" Version. 8.1, April 2002 by Niles Audio
`
`Corporation.
`
`1007. U.S. Patent No. 4,527,204 (filed February 14, 1983) (issued July 2, 1985) to
`
`Daisuke Kozakai.
`
`{01704541.2}
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`- iv -
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`
`
`Case No.: IPR2014-1146
`
`U.S. Patent No. 8,243,207
`
`Petitioner Universal Remote Control, Inc. ("Petitioner" or "URC") hereby
`
`requests rehearing of the Board’s January 9, 2015 Decision (“Paper 9” or “the
`
`Decision”) under 37 C.F.R. §42.71(d)(1). The present request is being timely filed
`
`in accordance with 37 C.F.R. §42.71(d)(1) within 14 days of the date of the
`
`Decision.
`
`I.
`
`INTRODUCTION
`
`Petitioner
`
`respectfully
`
`submits
`
`that
`
`the Board
`
`appears
`
`to
`
`have
`
`misapprehended or overlooked certain aspects of Petitioner’s argument with
`
`respect to the invalidity of claim 12 of U.S. Patent No. 8,243,207 (the ‘207 patent).
`
`As demonstrated below, this resulted in the Board’s determination that there was
`
`no reasonable likelihood that claim 12 is: (1) anticipated by U.S. Patent Publication
`
`No. 2003/0120831 to Dubil et al. (“the ‘831 Publication” or “Dubil”); and/or (2)
`
`obvious in view of the teachings of Dubil.
`
`II.
`
`ARGUMENT
`
`A.
`
`The Decision appears to overlook portions of the claim
`language of the claim element allegedly not inherently
`disclosed by the Dubil reference
`
`Petitioner asserted that Dubil inherently discloses the limitation of “the user
`
`selection of at least one of the plurality devices to be used in the configuration
`
`comprises one or more signals received from the controlling device having data
`
`indicative of an appliance,” in claim 12 of the ‘207 patent. See Petition, Paper 1,
`
`{01704541.2}
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`- 1 -
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`
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`Case No.: IPR2014-1146
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`U.S. Patent No. 8,243,207
`
`pp. 22-23.
`
`In the Decision, the Board indicates that it was not persuaded that
`
`“Dubil necessarily requires that a signal is transmitted to the VCR 113 that
`
`contains data pertaining to configuring VCR 113 to receive input from satellite 115
`
`or configuring VCR 113 to send output to television 110.” See Decision, Paper 9,
`
`p. 13.
`
`In support of its position, the Board stated that “it is possible that Dubil’s
`
`remote 150 configures its AV system by doing nothing more than sending separate
`
`signals to satellite 115, VCR 113, and Television 110 without any of those separate
`
`signals containing data regarding a configuration interrelationship between and
`
`among those three AV system components.” Id. The Board appears to urge that
`
`the above-described alternative theory of operation of Dubil establishes that Dubil
`
`does not necessarily meet this claim limitation, and thus, this limitation is not
`
`inherent to Dubil.
`
`Petitioner notes, however, that the alternate operation proposed by the Board
`
`in the Decision meets the requirements of this claim limitation. The plain language
`
`of this element allows for transmission of “one or more signals.”
`
`Thus,
`
`transmission of three separate signals, as suggested by the Board, falls within the
`
`scope of the claim limitation in question. Further, receipt of a signal at the VCR
`
`113 to provide for its operation indicates that at least the VCR is an appliance of
`
`the selected configuration. Further, operation of the VCR requires input from
`
`{01704541.2}
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`- 2 -
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`
`
`Case No.: IPR2014-1146
`
`U.S. Patent No. 8,243,207
`
`some source component, and output to some destination component, both of which
`
`are selected appliances of the configuration. The additional signals sent to the TV
`
`110 and the Satellite 115 also “indicate” that each of these devices is an appliance
`
`selected in the configuration and are also received by the VCR as well. Thus, even
`
`if Dubil operated as suggested by the Board, its operation would satisfy the
`
`requirements of the allegedly missing feature of claim 12. Petitioner respectfully
`
`submits that Dubil thus inherently discloses this feature.
`
`The Board has not identified any other feature of claim 12 that is allegedly
`
`not disclosed by Dubil. Since this feature is inherent to Dubil, and the Board has
`
`acknowledged that the remaining features of claim 12 are disclosed by Dubil,
`
`Petitioner respectfully submits it is likely that it will succeed in invalidating claim
`
`12 as anticipated by Dubil.
`
`B.
`
`The Board’s Decision appears to overlook Petitioner’s
`application of the Graham factors in its argument that the
`limitation of claim 12 believed to be inherent to Dubil would
`have at least been obvious in light of the teachings of Dubil
`
`As noted above, Petitioner believes that the claim element discussed above
`
`is inherent to Dubil, and thus, Dubil anticipates claim 12 of the ‘207 patent.
`
`Alternatively, Petitioner explained that this feature would have been obvious
`
`in light of the teachings of Dubil. See Petition, Paper 1, p. 23. In the Decision, the
`
`Board generally states “[p]etitioner merely alleges that Dubil anticipated claims 12
`
`through 15 and, to the extent it may not anticipate, it nevertheless renders the
`- 3 -
`
`{01704541.2}
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`
`
`Case No.: IPR2014-1146
`
`U.S. Patent No. 8,243,207
`
`claims obvious.” See Decision, Paper 9, p. 16. The Board concludes that this is
`
`not sufficient to set forth a case of obviousness and makes reference to the
`
`requirement that obviousness must be established in light of the Graham factors.
`
`Id. at p. 17.
`
`Petitioner notes that the Board’s comments in this context are directed to
`
`page 19 of the Petition. See Decision, Paper 9, p. 16. The Board appears to have
`
`overlooked the more detailed discussion of obviousness of this claim term at page
`
`23 of the Petition.
`
`Petitioner recognizes that any inquiry into the issue of obviousness must take
`
`into account the Graham factors, including the scope and content of the prior art,
`
`the differences between the prior art and the claim, and the level of skill of one
`
`“skilled in the art.” Petitioner’s argument with respect to obviousness of the claim
`
`term noted above properly take these considerations into account.
`
`The scope and content of Dubil is discussed in detail in the Petition.
`
`Specifically, Petitioner explains how the content of Dubil discloses all of the
`
`features of claim 12. See Petition, Paper 1, pp. 19-25. To the extent the feature at
`
`issue is not deemed inherent, the Petition recognizes this potetnial difference
`
`between Dubil and the claimed feature.
`
`See Petition, Paper 1, p. 23. The
`
`declaration of Mr. Geier, which Petitioner relied on in its Petition, discusses the
`
`level of skill in the art as well as Mr. Geier’s understanding of the teachings of
`
`{01704541.2}
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`- 4 -
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`
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`Case No.: IPR2014-1146
`
`U.S. Patent No. 8,243,207
`
`Dubil as one of skill in the art. See Exhibit 1003, ¶¶ 17-18 and 39. Mr. Geier
`
`made clear that he understood Dubil to disclose that the “VCR 113 must receive
`
`signals from the remote control (controlling device) that indicate the appliances
`
`(input or output devices) to be used in the configuration.” Id. at ¶ 39. Mr. Geier
`
`further explicitly explained that it would have been obvious for the system of Dubil
`
`to include this feature “since the system described therein is specifically intended
`
`to allow a user
`
`to control a home theatre system,
`
`including the selected
`
`components therein through one or more signals from the remote control.” Id.
`
`Thus, Petitioner’s obviousness argument with respect to this claim limitation
`
`considered the Graham factors, as is required. The Board’s statement in the
`
`Decision that “[P]etitioner did not present a proper obviousness case under
`
`Graham,” appears to have overlooked the analysis outlined above. See Decision,
`
`Paper 9, p. 17.
`
`As noted, the Board has not identified any other feature of claim 12 that is
`
`allegedly not disclosed by Dubil. As this feature is at least obvious, and the Board
`
`acknowledges that the remaining features of claim 12 are disclosed by Dubil,
`
`Petitioner respectfully submits that claim 12 of the ‘207 patent is at least obvious
`
`in light of Dubil. Accordingly,
`
`it
`
`is likely that Petitioner will succeed in
`
`invalidating claim 12.
`
`{01704541.2}
`
`- 5 -
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`
`
`Case No.: IPR2014-1146
`
`III. CONCLUSION
`
`U.S. Patent No. 8,243,207
`
`In view of the clarifications above, Petitioner there exists a reasonable
`
`likelihood that claim 12 of
`
`the ‘207 patent
`
`is invalid in view of Dubil.
`
`Accordingly, Petitioner repsectfully requests that the Board reverse its Decision
`
`with respect to claim 12 of the ‘207 patent and institute inter partes review of
`
`claim 12, in addition to the inter partes review of claims 13-15 which was ordered
`
`in the Decision. See Decision, Paper 9, p. 20.
`
`Date: January 23, 2015
`
`Respectfully submitted,
`
`/Douglas A. Miro/
`Reg. No. 31,643
`OSTROLENK FABER LLP
`1180 Avenue of the Americas
`7th Floor
`New York, NY 10036
`(212) 382-0700
`Counsel for Petitioner
`
`{01704541.2}
`
`- 6 -
`
`
`
`Case No.: IPR2014-1146
`
`U.S. Patent No. 8,243,207
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Eric J. Maiers, Reg. No. 59,614
`James J. Lukas, Reg. No. 59,114
`Matthew J. Levinstein, Pro Hac Vice
`Rob R. Harmer, Reg. No. 68,048
`GREENBURG TRAURIG, P.C.
`77 West Wacker Drive
`Suite 3100
`Chicago, IL 60101
`Maierse@gtlaw.com
`lukasj@gtlaw.com
`levinsteinm@gtlaw.com
`harmer@gtlaw.com
`chiipmail@gtlaw.com
`
`DATED: January 23, 2015
`
`{01704541.2}
`
`- 7 -
`
`/Jeannie Ngai/
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`New York, NY 10036
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