throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Applicant:
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`
`
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`Case No.:
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`
`
`Filing Date:
`
`Arling, et. al
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`
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`IPR2014-01146
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`
`
`09/29/2009
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`
`
`Patent No.:
`
`8,243,207
`
`
`
`Universal Remote Control, Inc.
`
`v.
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`
`
`
`
`
`Universal Electronics, Inc.
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`
`
`Trial Paralegal: Amy Kattula
`
`Attny Doc.: 059489.144400
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`
`System and Method
`For Activity Based
`Configuration of an
`Entertainment System
`
`RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.120
`
`Title:
`
`
`
`
`
`
`
`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
`25th day of March, 2015.
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`By: /Eric J. Maiers/
`Eric J. Maiers
`
`

`

`
`
`TABLE OF CONTENTS
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` Page
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`1
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`2
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` 6
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`11
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`11
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`12
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`13
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`13
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`16
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` 5
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`I.
`
`INTRODUCTION ……………………………………....................
`
`II. CLAIM CONSTRUCTION………………………………….........
`
`“activity key”…………………………………………..........
`
`“configuration of the entertainment device”………………
`
`A.
`
`B.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S
`INVALIDITY ARGUMENTS……………………………….........
`
`A. Dubil Does Not Anticipate Claim 13-15 Of The ‘207
`Patent Because Dubil Does Not Meet The Board’s
`Proposed Narrower Construction Of “configuration of
`the entertainment device”……………………………..........
`
`
`B. Dubil Does Not Anticipate Claim 13………………….........
`
`
`1.
`
`2.
`
`3.
`
`Dubil Does Not Configure An Audio Visual
`Entertainment Device………………………………..
`
`Dubil Does Not “associat[e] a command value
`corresponding to an activity key of a controlling
`device with a configuration of the entertainment
`device”………………………………………………...
`
`Dubil Does Not Teach “causing the entertainment
`device to access and use the configuration
`associated with the command value corresponding
`to the activity key of the controlling device in
`response to the entertainment device receiving from
`the controlling device a signal which includes the
`command value corresponding to the activity key of
`the controlling device”……………………………….
`
`
`
`i
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`

`

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`18
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`20
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`20
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`21
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`24
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`26
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`29
`
`IPR2014-01146
`
`4.
`
`Dubil Does Not Teach “wherein the configuration
`of the entertainment device is downloaded into the
`entertainment device from a computing device in
`communication with the entertainment device”……
`
`
`
`
`
`1.
`
`2.
`
`3.
`
`
`C. Dubil Does Not Anticipate Claim 14 Of The
`
`‘207 Patent…………………………………………………...
`
`Dubil Does Not Configure An Audio Visual
`Entertainment Device………………………………..
`
`Dubil Does Not Teach “receiving at the
`entertainment device from a controlling device a
`configuration request signal, wherein the
`configuration request signal includes a command
`value corresponding to an activity key of a
`controlling device”.…………………………………...
`
`Dubil Does Not Teach “causing the command value
`corresponding to the activity key of the controlling
`device included in the configuration request signal
`to be automatically associated with a configuration
`of the entertainment device”………………………...
`
`
`
`D. Dubil Does Not Anticipate Claim 15 Of The
`
`‘207 Patent…………………………………………………...
`
`
`
`IV. CONCLUSION……………………………………………………
`
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`In re Am. Acad. Of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 2
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ...................................................................... 14, 22
`
`PTAB Decisions
`3D-Matrix, Ltd. v. Menicon Co.,
`Case IPR2014-00398, Paper No. 11 (P.T.A.B. Aug. 1, 2014) ..................... 14, 22
`
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 2
`37 C.F.R. § 42.120 ..................................................................................................... 1
`MPEP § 2111 ............................................................................................................. 2
`
`iii
`
`

`

`
`
`
`Ex. 2002
`
`
`Ex. 2003
`
`
`Ex. 2004
`
`EXHIBIT LIST
`
`
`Ex. 2001 Mohawk Resources Ltd. V. Vehicle Service Group, LLC, Case
`IPR2014-00464, Paper 10 (Aug. 29, 2014)
`
`Edmund Optics, Inc. v. Semrock, Inc., Case IPR2014-00583, Paper 9
`(P.T.A.B. Sept. 19, 2014)
`
`3D-Matrix, Ltd. v. Menicon Co., Case IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014)
`
`Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B. July
`23, 2014)
`
`
`Ex. 2005 Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014)
`
`
`Ex. 2006 Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00246, Paper 6
`(P.T.A.B. June 18, 2014)
`
`
`Ex. 2007
`
`
`Ex. 2008
`
`
`Ex. 2010
`
`eBay, Inc. v. Paid, Inc., CBM2014-00125, Paper 15 (P.T.A.B. Sept.
`30, 2014)
`
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)
`
`
`Ex. 2009 Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Paper No. 12 (P.T.A.B. Aug. 12, 2013)
`
`SAS Institute, Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper
`No. 15 (P.T.A.B. Dec. 30, 2013)
`
`
`Ex. 2011 Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Paper No. 12 (P.T.A.B. July 31, 2013)
`
`
`Ex. 2012-2016 INTENTIONALLY SKIPPED
`
`Ex. 2017
`
`Trial Transcript from Universal Electronics, Inc. v. Universal Remote
`Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D. Cal.), Dkt. No. 398-1
`
`
`
`iv
`
`

`

`IPR2014-01146
`
`Ex. 2018 Universal Remote Control, Inc.’s (“URC’s”) Initial Disclosures from
`Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
`8:12-cv-00329-AG-JPR (C.D. Cal.)
`
`
`Ex. 2019 URC’s Response to UEI’s Interrogatory at No. 6 from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`
`Ex. 2020 Ohsung Website Printout, available at
`http://www.ohsungec.com/02_affli/02_foreign/06.aspx.
`
`
`Ex. 2021 URC’s Amended Initial Disclosures from Universal Electronics, Inc.
`v. Universal Remote Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D.
`Cal.)
`
`
`Ex. 2022 Defendant Ohsung Electronics, USA, Inc.’s Answer to Second
`Amended Complaint, Dkt. No. 76, from Universal Electronics Inc., v.
`Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and
`Ohsung Electronics U.S.A., Inc., Case No. SACV 13-00984 AG
`(JPRx) (C.D. Cal.)
`
`
`Ex. 2023
`
`LinkedIn Profile of Jak You, available at
`https://www.linkedin.com/pub/jak-you/92/8a5/6b.
`
`09/05/2013 M. Hurley Email to L. Kenneally
`
`
`Ex. 2024
`
`Ex. 2025 Amended Notice of 30(b)(6) Deposition to URC from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`
`Ex. 2026
`
`
`Ex. 2027
`
`Joint Stipulation Staying Action Pending Petitions for Inter Partes
`Review of All Asserted Claims, Dkt. No. 87 from Universal
`Electronics Inc., v. Universal Remote Control, Inc., Ohsung
`Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No.
`SACV 13-00984 AG (JPRx) (C.D. Cal.)
`
`Joint Statement of the Parties Pursuant to Order Staying Action (ECF
`No. 88) and Joint Request to Continue Status Conference, Dkt. No.
`102 from Universal Electronics Inc., v. Universal Remote Control,
`
`v
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`

`

`IPR2014-01146
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`Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A.,
`Inc., Case No. SACV 13-00984 AG (JPRx) (C.D. Cal.)
`
`
`Ex. 2028 URC NY Secretary of State, Division of Corporations, Entity
`Information Website Printout
`
`
`Ex. 2029 Declaration of Alex Cook
`
`vi
`
`

`

`
`
`Universal Electronics, Inc. (“UEI” or “Patent Owner”), respectfully submits
`
`this Response in accordance with 37 C.F.R. § 42.120 to the Petition for Inter Partes
`
`Review of Claims 12-15 of U.S. Patent No. 8,243,207 (the “‘207 patent”) filed by
`
`Universal Remote Control, Inc. (“URC” or “Petitioner”). UEI has timely filed its
`
`Response in accordance with the Board’s Scheduling Order. (Paper 10.)
`
`I.
`
`INTRODUCTION
`The Board denied-in-part URC’s Petition, instituting inter partes review
`
`proceedings only on Claims 13-15 of the ‘207 patent based on U.S. Patent
`
`Publication No. 2003/0120831 to Dubil (“Dubil”). The Board should affirm the
`
`validity of Claims 13-15 of the ‘207 patent because Dubil fails to disclose all of the
`
`limitations of each of the challenged claims. The remote control of Dubil maps a
`
`set of commands to the keys of the Dubil remote control based on the selected user
`
`activity such that the remote control can transmit remote control signals to the
`
`appropriate target appliance(s). Dubil does not, however, recite the claimed
`
`methods of the ‘207 patent describing how a controlling device configures the
`
`claimed “entertainment device” in communication with a plurality of component
`
`devices. Petitioner’s conclusory analysis coupled with Petitioner’s expert’s ipse
`
`dixit does not present a cogent and complete basis for invalidity of Claims 13-15 in
`
`view of Dubil. For these reasons, Petitioner has not met its burden to demonstrate
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`

`

`IPR2014-01146
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`that any of Claims 13, 14, and/or 15 are invalid in view of Dubil, and the Board
`
`should affirm the validity of those claims.
`
`II. CLAIM CONSTRUCTION
`The Board must construe the claims of the ‘207 patent under the “broadest
`
`reasonable interpretation” standard. In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d
`
`1359, 1364 (Fed. Cir. 2004); MPEP § 2111; 37 C.F.R. § 42.100(b).
`
`Claim 13 of the ‘207 patent reads as follows:
`
`A method for configuring an audio visual entertainment device in
`communication with a plurality of devices for an activity, comprising:
`associating a command value corresponding to an activity key of a
`controlling device with a configuration of the entertainment
`device, the configuration of the entertainment device
`comprising at least one of the plurality of devices being used as
`an audio visual input source device for the entertainment device
`and at least one of the plurality of devices being used as an
`audio visual output destination device for the entertainment
`device; and
`causing the entertainment device to access and use the
`configuration associated with the command value
`corresponding to the activity key of the controlling device in
`response to the entertainment device receiving from the
`controlling device a signal which includes the command value
`corresponding to the activity key of the controlling device;
`wherein the configuration of the entertainment device is
`downloaded into the entertainment device from a computing
`
`
`
`2
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`

`

`IPR2014-01146
`
`device in communication with the entertainment device and
`wherein a configuration of the controlling device in which an
`activation of one or more command keys of the controlling
`device will cause the controlling device to communicate
`commands to the one or more of the audio visual source device
`and the audio visual output destination device is downloaded
`into the controlling device from a computing device in
`communication with the controlling device.
`
`(Ex. 1001, ‘207 patent at Claim 13.)
`
`Briefly, Claim 13 of the ‘207 patent discloses a method to configure an
`
`audio visual entertainment device in communication with a plurality of devices for
`
`an activity. (‘207 patent at Claim 13.) For example, as shown in Figure 1 of the
`
`‘207 patent, an AV receiver 200 may be connected to a plurality of other devices.
`
`
`
`3
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`

`

`IPR2014-01146
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`(Id. at Fig. 1.) A controlling device, e.g., a remote control, has an “activity key”
`
`that has a corresponding command code associated with a configuration of the
`
`entertainment device. (Id. at Claim 13.) Figure 2 of the ‘207 patent, reproduced in
`
`part below, shows an example of a remote control 100 with activity keys 200.
`
`
`
`(Id. at Fig. 2.) The configuration of the entertainment device comprises at least
`
`one of a plurality of devices being used as an audio visual input source and at least
`
`one of the plurality of devices being used as an audio visual output destination
`
`device for the entertainment device. (Id. at Claim 13.) For example, in the “Play
`
`game” activity, the input source may be game console 110, and the output
`
`destination may be TV 114 and speakers 116. The entertainment device accesses
`
`and uses the configuration associated with the command value corresponding to
`
`the controlling device’s activity key in response to a signal sent from the
`
`controlling device that includes the command value corresponding to that activity
`
`key of the controlling device. (Id.)
`
`
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`4
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`

`

`IPR2014-01146
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`The configuration of the entertainment device is downloaded into the
`
`entertainment device from a computing device in communication with the
`
`entertainment device. (Id.) A configuration of the controlling device is
`
`downloaded into the controlling device from a computing device in
`
`communication with the controlling device. (Id.) The configuration of the
`
`controlling device permits the controlling device to communicate commands to the
`
`one or more of the audio visual source device and the audio visual output
`
`destination device upon activation of one or more command keys of the controlling
`
`device. (Id.)
`
`The claimed advantage of the ‘207 patent is a method comprising “a
`
`cooperative effort between [an] AV receiver[, or other entertainment device,] and
`
`an associated universal controlling device such as a remote control in which
`
`activation of an activity key or button on the controlling device results in
`
`transmission of a signal to the AV receiver[, or other entertainment device,] to
`
`initiate certain previously defined configuration actions….” (Id. at 1:38-43.)
`
`“activity key”
`
`A.
`The Board construed “activity key” in accordance with Patent Owner’s
`
`proposed construction: “a key that, upon activation, transmits a signal to an
`
`entertainment device that corresponds to a previously defined configuration for an
`
`
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`5
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`IPR2014-01146
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`activity.” (Paper 9 at 8.) Patent Owner has applied this construction of “activity
`
`key” herein.
`
`B.
`
`“configuration of the entertainment device”
`
`The Board, sua sponte, proposed two alternative constructions in its
`
`Institution Decision for “configuration of the entertainment device.” (Paper 9 at 9-
`
`10.) On one hand, the Board noted that the claim term “configuration of the
`
`entertainment device” “could be construed broadly such that the entertainment
`
`device and associated input and output appliances are ‘configured’ by selectively
`
`powering on and powering off the input and output appliances so that, for example,
`
`only one input appliance supplies an active input signal to the entertainment device
`
`and only one output appliance renders the output signal.” (Id.) Alternatively, the
`
`Board proposed a narrower construction, namely that a “configuration of the
`
`entertainment device” “require[s] transmission of a signal to the entertainment
`
`device such that the configuration thereof contemplates affirmatively selecting an
`
`AV input source and an AV output destination and affirmatively performing
`
`switching actions accordingly.” (Id. at 9.)
`
`The Board noted that the following passage from the specification may
`
`support its proposed narrower construction:
`
`Audio/video outputs of a group of various media source appliances
`such as for example a set top box (“STB”) 104, a first DVD player
`106, a second DVD player 108, a game console 110, and a CD
`
`
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`6
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`

`IPR2014-01146
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`changer 112 are all connected as inputs to an AV receiver 102. AV
`receiver 102 in turn functions to switch the currently desired input
`media stream to one or more designated outputs of AV receiver 102
`which are, in turn, connected to various audio and/or video rendering
`devices such as TV 114, projector 118, and/or loudspeakers 116 …
`
`(‘207 patent at 2:27-37.) This passage does support a construction of
`
`“configuration of the entertainment device” that requires active switching of the
`
`AV receiver, i.e., the claimed “entertainment device,” to the desired input source
`
`and output destination(s). The passage discloses that the entertainment device
`
`actively switches to the desired input source and output destination in contrast to
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`sending selective powering on and powering off commands to the desired and
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`undesired source and destination devices, respectively. (Ex. 2029, Declaration of
`
`Alex Cook (“Cook Decl.”) at ¶¶ 36, 37.)
`
`In addition to the passage identified by the Board, the following passages
`
`also support adopting the narrower construction for “configuration of the
`
`entertainment device” posed by the Board. For example, the Summary of the
`
`Invention states:
`
`[T]he outputs and inputs of the various components are generally
`routed to and switched through one central device such as an AV
`receiver. The inventive methods described herein comprise a
`cooperative effort between the AV receiver and an associated
`universal controlling device such as a remote control in which
`
`
`
`7
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`

`

`IPR2014-01146
`
`activation of an activity key or button on the controlling device results
`in transmission of a signal to the AV receiver to initiate certain
`previously defined configuration actions….
`
`(‘207 patent at 1:34-42 (emphasis added).) In this passage, the ‘207 patent
`
`discloses that the entertainment device actively switches to the desired input and
`
`output devices in response to a signal sent from the controlling device
`
`corresponding to a previously defined configuration. (Cook Decl. at ¶¶ 38, 39.)
`
`This passage supports both the concept of active “switching” by the entertainment
`
`device as well as the controlling device transmitting a signal to the entertainment
`
`device to invoke the desired configuration. (Id. at ¶ 40.)
`
`The detailed description of the ‘207 patent is in accord:
`
`As will be appreciated audio and video inputs and outputs (which may
`be more or less in number than illustrated) may comprise analog or
`digital signals and exemplary AV receiver 102 may be provisioned
`with analog-to-digital (ADC) converters, digital-to-analog (DAC)
`converters, video decoders, HDMI encoder/decoders, CODECs,
`format converters, etc., all as necessary to implement the
`input/output switching and routing functionality.
`
`(‘207 patent at 4:63-5:3 (emphasis added).) To one of ordinary skill in the art, this
`
`passage contemplates that the active switching by the AV receiver (the
`
`entertainment device), may be achieved in many way, but that, at a minimum, the
`
`AV receiver must implement switching functionality in some manner. (Cook Decl.
`
`
`
`8
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`

`

`IPR2014-01146
`
`at ¶ 42.) There is no indication that the configuration of the entertainment device
`
`may be achieved solely by passively powering on and off the desired and undesired
`
`devices. (Id. at ¶ 43.) The ‘207 patent likewise discloses that the AV receiver may
`
`execute instructions (as programmed into a processor) “to cause the routing of
`
`video and/or audio signals between the various inputs and outputs….” (‘207 patent
`
`at 5:26-27.) Here too, the ‘207 patent supports the Board’s narrower construction
`
`requiring that the entertainment device actively switch to the desired input source
`
`and output destination devices. (Cook Decl. at ¶¶ 44, 45.) Specifically, consistent
`
`with Claims 13-15, this passage confirms that it is the entertainment device that
`
`performs the switching to the desired input and output devices in accordance with a
`
`configuration of the entertainment device, as opposed to selectively powering on
`
`and off the desired and undesired input and output devices. (Id.) Even where the
`
`AV receiver instructs the controlling device to power on a desired input or output
`
`device, that occurs only after the AV receiver (or entertainment device) has
`
`actively selected the desired input source and output destination. (See ‘207 patent
`
`at FIG. 6, step 608, 7:7-10 (“Once a source device has been designated, at step 608
`
`the AV receiver operating program selects the audio video and/or AV inputs
`
`associated with the designated source device.”); Cook Decl. at ¶ 46.)
`
`
`
`
`
`The remainder of the ‘207 patent specification is in accord:
`
`9
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`

`

`IPR2014-01146
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`For example, while described in the context of an AV receiver acting
`[as] a central switching point for content streams in a home
`entertainment system, it will be appreciated that any other suitably
`equipped device, for example an advanced cable or satellite STB, a
`personal computer, etc., may be substituted for an AV receiver in the
`practice of the instant invention. Further, while a preferred
`embodiment described above comprises a controlling device capable
`of bidirectional communication with an AV receiver or other central
`switching device, it will be appreciate[d] that many of the step of the
`inventive methods may also be practiced in a system comprising a
`controlling device which is in unidirectional (inward) communication
`with the central switching device, in which certain controlling device
`actions may be initiated autonomously as macro sequences using, for
`example, discrete appliance commands as are know[n] in the art.
`
`(‘207 patent at 9:17-32 (emphases added).)
`
`
`
`The specification of the ‘207 patent confirms that the claimed “configuration
`
`of the entertainment device” requires transmission of a signal to the entertainment
`
`device such that the configuration thereof contemplates affirmatively selecting an
`
`AV input source and an AV output destination and affirmatively performing
`
`switching actions accordingly. (See generally ‘207 patent; Cook Decl. at ¶¶ 47-
`
`49.) Thus, the Board should therefore construe “configuration of the entertainment
`
`device” as such.
`
`
`
`10
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`

`

`IPR2014-01146
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S INVALIDITY
`ARGUMENTS
`
`Dubil does not disclose all of the limitations of each of challenged Claims
`
`13-15 of the ‘207 patent such that the Board should affirm their validity. In
`
`support of its Response, Patent Owner has submitted, and cites herein where
`
`appropriate, the declaration of its expert, Alex Cook, who has over thirty years of
`
`experience with remote controls and other related technologies. (See generally
`
`Cook Decl. at ¶¶ 1-11.)
`
`A. Dubil Does Not Anticipate Claim 13-15 Of The ‘207 Patent Because
`Dubil Does Not Meet The Board’s Proposed Narrower Construction
`Of “configuration of the entertainment device.”
`
`
`
`For the reasons discussed above, the Board should construe “configuration
`
`of the entertainment device” to “require transmission of a signal to the
`
`entertainment device such that the configuration thereof contemplates affirmatively
`
`selecting an AV input source and an AV output destination and affirmatively
`
`performing switching actions accordingly.” Adopting that construction, Dubil
`
`does not disclose a “configuration of the entertainment device” because the alleged
`
`entertainment device of Dubil, a VCR, (Pet. at 25,) is not disclosed as affirmatively
`
`selecting an AV output destination or affirmatively performing switching actions
`
`to a particular AV output destination. Neither Petitioner nor Mr. Geier points to
`
`any portion of Dubil that discloses affirmatively performing switching operations.
`
`(Cook Decl. at ¶ 53.)
`
`
`
`11
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`

`

`IPR2014-01146
`
`A VCR operates merely as a passthrough device, in which the AV source
`
`information is routed directly to all AV outputs of the VCR. (Id. at ¶ 54.) VCRs
`
`cannot be configured in a way that permits the AV information to be routed only to
`
`certain output devices, other than by simply physically disconnecting an output
`
`device from the VCR. (See id. at ¶ 55.) Needless to say, physically disconnecting
`
`an output device from a VCR does not constitute “active switching” between AV
`
`output destination devices. (Id. at ¶ 56.) Accordingly, a VCR cannot perform
`
`switching operations to affirmatively select an AV output destination in
`
`accordance with Patent Owner’s proposed construction of “configuration of the
`
`entertainment device” limitation. (Id. at ¶ 57.)
`
`For this reason, Dubil does not disclose the “configuration of the
`
`entertainment device” limitation in accordance with Patent Owner’s proposed
`
`construction, and therefore does not anticipate Claims 13, 14, and/or 15, each of
`
`which recites the “configuration of the entertainment device” limitation.
`
`B. Dubil Does Not Anticipate Claim 13.
`
`Even if Dubil discloses “active switching” in accordance with the Board’s
`
`proposed narrower construction of “configuration of the entertainment device,”
`
`Dubil still does not anticipate Claim 13 because it does not (i) teach the claimed
`
`“configuration of the entertainment device,” (ii) “associat[e] a command value
`
`corresponding to an activity key of a controlling device with a configuration of the
`
`
`
`12
`
`

`

`IPR2014-01146
`
`entertainment device,” (iii) “caus[e] the entertainment device to access and use the
`
`configuration associated with the command value corresponding to the activity key
`
`of the controlling device in response to the entertainment device receiving from the
`
`controlling device a signal which includes the command value corresponding to the
`
`activity key of the controlling device” and/or (iv) download “the configuration of
`
`the entertainment device … into the entertainment device from a computing device
`
`in communication with the entertainment device.”
`
`1.
`
`Dubil Does Not Configure An Audio Visual Entertainment
`Device
`For the reasons discussed in Section III.A., supra, Dubil does not teach the
`
`claimed “configuration of the entertainment device.” Therefore, Dubil does not
`
`anticipate Claim 13.
`
`2.
`
`Dubil Does Not “associat[e] a command value
`corresponding to an activity key of a controlling device with
`a configuration of the entertainment device.”
`
`Dubil does not “associat[e] a command value corresponding to an activity
`
`key of a controlling device with a configuration of the entertainment device.”
`
`Based upon nothing more than the fact that Dubil allegedly discloses an “activity
`
`key” and Mr. Geier’s conclusory opinion that parrots the language of the Petition
`
`itself, Petitioner concludes that “[o]ne skilled in the art would understand that
`
`[Dubil] discloses (either expressly or inherently) that the activity key must be
`
`
`
`13
`
`

`

`IPR2014-01146
`
`designated with a value (command value) by which to reference that activity key.”
`
`(Pet. at 26 (citing Ex. 1003, Declaration of James T. Geier (“Geier Decl.”), ¶ 44).)
`
`Although the Petition does not make clear how Dubil discloses this claim
`
`limitation, Petitioner appears to at least tacitly admit that Dubil does not expressly
`
`disclose the “associating a command value corresponding to an activity key of a
`
`controlling device with a configuration of the entertainment device” limitation by
`
`noting that “the activity key must be designated….” (Pet. at 26 (emphasis added).)
`
`Nevertheless, Petitioner’s apparent reliance on the doctrine of inherency falls short.
`
`“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., Case IPR2014-00398, Paper No. 11
`
`at 6 (P.T.A.B. Aug. 1, 2014) (quoting In re Robertson, 169 F.3d 743, 745 (Fed.
`
`Cir. 1999)) (internal quotations omitted) (emphasis added). A showing of
`
`inherency requires more than mere “probabilities or possibilities.” 3D-Matrix,
`
`Case IPR2014-00398, Paper No. 11 at 6.
`
`According to Mr. Geier:
`
`In my opinion, the ‘831 publication discloses associating
`44.
`a command value corresponding to an activity key of a controlling
`device with a configuration of the entertainment device. See the ‘831
`publication at ¶[0031] (an activity set (configuration of the
`entertainment device) is associated with a key (activity key) on the
`
`
`
`14
`
`

`

`IPR2014-01146
`
`remote control (the controlling device)). One skilled in the art would
`recognize that the activity key must be designated with a value
`(command value) by which to reference that key. Thus the command
`value corresponding to the activity key is associated with the
`configuration of the entertainment device.
`
`(Geier Decl. at ¶ 44 (emphasis added).) This paragraph does not establish that a
`
`command value corresponding to the activity key must be, i.e., is inherently,
`
`associated with the configuration of the entertainment device. (Cook Decl. at ¶¶
`
`59-60.) The fact that Dubil allegedly discloses an activity key does not in any way
`
`confirm that a command value corresponding to that activity key exists at all, let
`
`alone confirm that any such command value must be associated with a
`
`configuration of the entertainment device. (Id. at ¶ 61.) Indeed, neither Petitioner
`
`nor Mr. Geier offers a single reason why this claim limitation must necessarily be
`
`met based solely on the existence of an alleged activity key. (Id.)
`
`To the contrary, pressing one of the “activity set” keys on the Dubil remote
`
`control does not associat[e] a command value corresponding to an activity key of a
`
`controlling device with a configuration of the entertainment device. (Dubil at ¶¶
`
`[0021-22].) Rather, activating one of the “activity set” keys maps a set of
`
`functions to the Dubil remote control itself, (id.,) and may transmit a set of
`
`commands to various home entertainment system components without associating
`
`a command value corresponding to an activity key with a configuration of the
`
`
`
`15
`
`

`

`IPR2014-01146
`
`entertainment device. (Id. at ¶ 28; Cook Decl. at ¶¶ 62, 63.) For this reason, Dubil
`
`does not “configure an audio visual entertainment device” or “associat[e] a
`
`command value corresponding to an activity key of a controlling device with a
`
`configuration of the entertainment device” as required by Claim 13. Thus, Dubil
`
`does not anticipate challenged Claim 13.
`
`3.
`
`Dubil Does Not Teach “causing the entertainment device to
`access and use the configuration associated with the
`command value corresponding to the activity key of the
`controlling device in response to the entertainment device
`receiving from the controlling device a signal which
`includes the command value corresponding to the activity
`key of the controlling device”
`
`Dubil also does not anticipate Claim 13 because it does not disclose
`
`“causing the entertainment device to access and use the configuration associated
`
`with the command value corresponding to the activity key of the controlling device
`
`in response to the entertainment device receiving from the controlling device a
`
`signal which includes the command value corresponding to the activity key of the
`
`controlling device.” Dubil does not expressly disclose a controlling device (i.e.,
`
`the remote control) that sends a signal containing a command value to the
`
`entertainment device of Dubil (VCR 113) in response to the activation of one of
`
`the “activity set” keys of the Dubil remote control. (Cook Decl. at ¶¶ 64, 65.)
`
`Rather, activating one of the “activity set” keys maps a set of functions to the
`
`Dubil remote control itself, (Dubil, ¶¶ [0021-22],) and may transmit a set of
`
`
`
`16
`
`

`

`IPR2014-01146
`
`commands to various home entertainment system components without associating
`
`a command value corresponding to an activity key with a configuration of the
`
`entertainment device. (Id. at ¶ 28; Cook Decl. at ¶ 66.) Thus, the entertainment
`
`device from Dubil cannot “access and use the configuration associated with the
`
`command value corresponding to the activity key of the controlling device in
`
`response to the entertainment device receiving from the controlling device a
`
`signal” if the controlling device does not send such a signal containing a command
`
`value.
`
`
`
`Here again, Petitioner assumes that “[a] person of ordinary skill would
`
`understand that the ‘831 publication discloses (either expressly or inherently) that
`
`when an activity key is pressed on the remote control (controlling device), VCR
`
`113 (the entertainment device) must receive a signal from the remote control that
`
`includes the command value corresponding to the selected activity key so that
`
`VCR 113 knows which input and output devices to use for the selected activity.”
`
`(Pet. at 27 (emphasis added).) Petitioner does not articulate any reason why the
`
`VCR 113 “must inherently

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